The UK ratified the UPC Agreement: One Step Closer to the Completion of the Ratification Process for the UPC to Operate

By: Francesca Giovannini

On April 26, 2018, the United Kingdom (UK) ratified the Unified Patent Court (UPC) Agreement, confirming that the declared intention to ratify the Agreement was genuine and sincere despite all uncertainties about the retaining role of the Court of Justice of the European Union (EU), to which, according to the Agreement, questions can be submitted regarding the interpretation of EU law. Indeed, the primacy of EU law ensured by the Court of Justice of the EU is generally deemed to be incompatible with the outcome of the British Referendum, which requires that the UK leave the EU and be exclusively governed by national institutions and laws.

Additionally, it is still unclear what steps have to be taken to ensure continuing participation in the UPC Agreement after the UK leaves the EU, which is planned for March 29, 2019. A number of legal options to ensure these are available, including amending Arts. 2 and 84 of the UPC Agreement to let the post-Brexit UK stay in the UPC and making use of Art. 142 of the European Patent Convention (EPC). The latter provision of the EPC, which is a non-EU multilateral treaty, and thus fully compatible with the outcome of the British Referendum, set the possibility of establishing a special agreement among any group of EPC Contracting States providing that a European patent becomes a unitary patent in respect of all these States. However, on the one side, the Administrative Committee, which is the body entitled to amend the UPC Agreement, will be capable to act only once the Provisional Application Phase starts, i.e., after Germany, the last mandatory participating state, signs the UPC Agreement. Also, according to Art. 87 of the UPC Agreement, if a single Contracting Member State is contrary to the amendment, a Review Conference of all Contracting Member States will be necessary, thus likely requiring years before proceeding further with the process. On the other side, further negotiations and corresponding time would be needed to implement the option provided by Art. 142 EPC.

When compared to the period following the UK Referendum and before the UK ratification, we are now a step closer to the completion of the ratification process, Germany being the only mandatory participating state which has yet to ratify the Agreement for the UPC to operate.

However, it is still unclear how the German Supreme Court will decide on the pending constitutional complaint filed against the UPC bills for alleged infringement of the German Constitution. With reference to this issue, the pending complaint is expected to be handled this year, probably together with four additional pending complaints based on the alleged lack of independence of the Boards of Appeal of the European Patent Office.

According to the most optimistic scenario, which assumes that the German Supreme Court dismisses the pending complaints and Germany ratifies the Agreement before March 29, 2019, the new possible target date for the entry into force of the UPC Agreement could be Mid-2019. The remaining uncertainties as pointed out above, however, do not let us be too optimistic, so that further delays may be expected.

Osha Liang will continue monitoring the situation and communicate any relevant news, including the new earliest opt-out date, as soon as the situation becomes clearer. For any questions, please contact Francesca Giovannini at or your usual Osha Liang contact.