Update on UPC and Joint Ventures with the

Update on UPC and Joint Ventures with the EPO Kevin Mooney EPLAW 2019

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Entry into force of the UPC Article 89 UPCA This Agreement shall enter into force … on the first day of the fourth month after the deposit of the thirteenth instrument of ratification … including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place… Ratifications Of the 25 EU Member States who signed the Agreement on 19 February 2013 the following 16 have ratified so far: Austria France Portugal Lithuania Pending Belgium Luxembourg Sweden Estonia Germany Bulgaria Malta Finland Latvia Denmark Netherlands Italy UK Current controversies German constitutional complaint UK Brexit 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 The German Constitutional complaint Approvals of the 2 laws required for ratification of the UPCA were obtained on 9 th March 2017 (Bundestag) and 31 March 2017 (Bundesrat) What remained were purely formal steps including certification by the Federal President On 31 March 2017 the complaint was filed by Dr Ingve Stjerna The principal grounds of complaint: failure to obtain the required majority (2/3) in the Bundestag lack of independence of the UPC judges breach of Union law in several respects democratic deficits with the procedure for drafting the Rules of Procedure June 2017 – The Constitutional Court “requests” the President to suspend certification of the ratification Several bodies (institutions) were invited to submit comments (amicus briefs) before 31 December 2017 Date of decision? Apparently during the first quarter of 2020. If it is favourable what are the next steps? 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Entry into force of the Provisional Application Phase (“PAP”) Comes into force when 13 Signatory States of the UPCA have approved the Protocol on PAP and either ratified or received government approval to ratify the UPCA. The 13 must include France, UK and Germany. At present, 12 states, including France and UK have ratified the protocol on PAP. Pending Germany and one other signatory state (? Austria) 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Timetable - Key provisional dates assuming Germany ratifies the Protocol on the Provisional Application Phase by 1 st [ X] 2019 Provisional Application Phase starts – [ X ] 2019 (? 1 st March 2020) Recruitment and Training of LQJs and TQJs (including “Top-up” candidates – see later) Appointment of Administrative Committee Elections for President of CFI and Court of Appeal Election for Presidium Appointment of Registrar and Deputy Registrar Sunrise Period – [X + 8/12] At this point Germany ratifies the UPCA Applications to opt out Applications for registration as a representative Entry into force of the Court [X + 11/15] i. e. between February and June 2021 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Interim administration of UPC Last Preparatory Committee meeting – 15 th March 2017 Administrative Committee to be appointed at start of PAP Interim Teams HR Team (prepares inter alia for the recruitment and training of judges) IT Team (including CMS) Registry Team Finance Team Corporate Function Registry Workshops Munich – October 2018 Milan – April 2019 Hague – January 2020 Judicial Recruitment “Top-up” Campaign Closed on 29 th July with over 100 new applications for both LQJ (legally qualified judges) and TQJ (technically qualified judges ) 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Rules of Procedure - Update “Final Draft” adopted by Preparatory Committee on 15 March 2017 and now on UPC website Changes since 18 th draft Rules 370 and 371 relating to fees have been incorporated Rule 5 (Opt-out) amendments Minor redrafting and corrections But further changes still to be adopted – principally new Rule 262 A relating to confidentiality clubs, changes required by operation of the GDPR and a procedure to remove unauthorised opt-outs All changes will be adopted by Administrative Committee during Provisional Application Phase 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Can the UK stay in the UPC following Brexit? The three key questions following the Opinion of the CJEU 1/09 dated 08 March 2011 1. The Opinion did not explicitly state that non-EU Member States were excluded from participating in the UPC. Was that in fact a necessary consequence of the conclusion? 2. Specifically, if an EU Member State ratifies as the U. K. has done can it remain a Contracting Member State if it subsequently ceases to be an EU-Member State? 3. The UPCA does not contain any leaving provisions. How is this overcome if the UK has to leave? The first two questions were the subject of a number of legal opinions, including one by Richard Gordon QC and Tom Pascoe dated 12 September 2016 The opinion was commissioned by IPLA, CIPA and IPFed (UK IP professional bodies) Key conclusion: There is no domestic constitutional reason why the UK could not participate post-Brexit provided that there is put in place an agreement to safeguard three key EU constitutional principles identified by the CJEU in its Opinion: a) respect of the UPC for the supremacy of EU law (present and future) in the area of patent law b) preservation of the possibility of damages/infringement proceedings for breach of EU law; and c) preservation of the obligation of the UPC to make references to the CJEU. 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Can the UK stay in the UPC following Brexit? According to the Gordon/Pascoe legal opinion the UK can remain in the UPC after the transitional period but certain changes to the UPC Agreement will have to be agreed between UK and the other Contracting Member States (or the EU on behalf of such states) The definition of “Contracting Member State” must change to “Contracting State” The definition of the UPC as a court “common to Contracting Member States” would have to be amended to refer to “all Contracting States” Similar amendments to ensure that EU nationality is not essential for lawyer representatives and judges There must be a separate agreement between UK and EU to allow the CJEU to accept preliminary references from the UK division of the UPC if UK remain a member state The Brussels Regulation will need to be amended or replaced so far as UK is concerned 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Can the UK stay in the UPC following Brexit? • In November 2019 an independent research paper commissioned by Committee on Legal Affairs of the European Parliament was published. The paper entitled “EU Patent and Brexit” came to the following conclusions: • If there was a political agreement the continued presence of the UK would be possible but the UK would have to accept the supremacy of the EU in the area of patents (as is already provided for Article 20 UPCA) • UK participation is desirable • The jurisprudence of the CJEU is not expressly excluding non-EU Member States from participating • The UK is however sending “mixed messages” i. e. it wants to stay in but also wants to take back control of its laws 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Can the UK stay in the UPC following Brexit? • What is the general political attitude to the UPC in UK – mixed messages? • All relevant government ministers over the past 3 years have expressed the desire for the UK to participate, including the current Minister of State for Science, Chris Skidmore MP • The Government White Paper on the future relationship with the EU on IP dated 12 July 2018 confirmed this • UK had earlier ratified UPCA on 26 April 2018 – and after the referendum • UK has also ratified the Protocol on the Provision Application Phase • UK business and the IP professions are universally in favour 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Can the UK stay in the UPC following Brexit? The Options If there is a Brexit deal (Withdrawal Agreement) There will be a transitional period (until ? 31 December 2020) to allow UK and EU to finalise their future economic relationship The effect of Articles 2 and 7 of the current Withdrawal Agreement (not approved by the UK Parliament) is that UK remains a “Contracting Member State” of the UPC Agreement for the transitional period and therefore will participate fully in all preparations for the court The transitional period will allow the UK and the EU states to agree the necessary amendments to the UPC Agreement 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Can the UK stay in the UPC following Brexit? There is no Brexit deal! Assuming a favourable German constitutional decision and German ratification of the protocol on PAP preparations will start for the opening of the court and the UK, having ratified, will continue to participate in the preparations. The key questions are whether the EU states and the EU will still be prepared to negotiate the changes to the UPCA and whethere will be a further legal challenge to the CJEU to prevent such changes. 44925244

Update on UPC and Joint Ventures with the EPO EPLAW 2019 Joint Ventures (EPLAW, European Patent Academy and patent judges and academics) “The jurisdiction of European courts in patent disputes”: epo. org/brussels-scenarios “Compulsory licensing in Europe”: epo. org/compulsory-licensing “Patent enforcement in Europe” – pending: epo. org/patent-enforcement (to be published in January 2020) • In addition the Academy is updating its November 2010 publication: “Patent Litigation in Europe”: epo. org/litigation-ms 44925244

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