Implementing the Unitary Patent in the UK
Photo T. B. Murray
Creative Commons Licence
Whatever happens on 23 June 2016 HMG will have to make rules to implement the Agreement on a Unified Patent Court in the United Kingdom. The reason I say that is that the Agreement comes into force after 13 countries, including France, Germany and the UK, ratify the Agreement. Nine countries including France have already done so (see the European Council's website). Parliament has enacted primary legislation to enable the Secretary of State to give effect to the Agreement in the UK by order in council (see S,17 of the Intellectual Property Act 2014 inserting a new s.88A and s.88B into the Patents Act 1977). As it would take time to negotiate an exit agreement under art 50 (2) of the Treaty on European Union the Agreement will almost certainly come into force while the UK is still an EU member. There would have to be some sort of secondary legislation at least for the time in which the UK remains a party to the UPC Agreement.
Consultation on such legislation began shortly after the Intellectual Property Act 2014 received royal assent. The Intellectual Property Office published a draft statutory instrument at Annex C to a Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent (see my article entitled Unified Patent Court Consultation 25 June 2014) together with a series of questions and invited responses by 2 Sept 2014 (see my article entitled Unified Patent Court Consultation 25 June 2014). HMG received 20 responses to that invitation which it summarized in its Technical Review and Call for Evidence Summary of Responses on 12 March 2015. On 14 Jan 2016 HMG published its reply to those responses in its Government Response to the Technical Review and Call for Evidence on Secondary Legislation Implementing the Agreement on a Unified Patent Court and EU Regulations Establishing the Unitary Patent. In the executive summary of that document HMG indicated that the 20 responses have helped to inform the further development of the secondary legislation and also assisted with updating impact assessments that go with that legislation.
HMG has indicated that it will make changes to the provisions of the draft statutory instrument that confer jurisdiction on the UPC (paras 10 and 20), make transitional arrangements (para 18), provide for enforcement of the UPC's orders (para 24), the computer software exception (para 55) and the definition of infringement (para 56). Other provisions of the draft order upon which the IPO consulted remain the same.
Over the next few weeks I shall be writing about the draft regulations in so far as they relate to our law on infringement, groundless threats and examiners' opinions. Should anyone wish to discuss those topics, unitary patents or patent law in general he or she should call me during office hours on +44 (0)20 7404 5252 or use my contact form.