We can sign-up, but can we opt-out?: 24 Member States sign Unified Patent Court Agreement

The signed Unified Patent Court Agreement

The AmeriKat tucked herself away in her office this afternoon to watch the signing of the Unified Patent Court Agreement. This is hardly a news item, as it was expected that at least the required 13 would sign (and then ratify) the Agreement and, as the IPKat pointed out, had no one signed it that would have been news.

Nevertheless, the AmeriKat was positioned when after 30 minutes of waiting, the video finally started which showed various permanent member representatives mingling, gossiping and even taking photos with their camera phones while awaiting for proceedings to commence. To someone who's past two year's has been riddled with late nights, calls for action and literally thousands of e-mails from and to industry, lawmakers and practitioners in an attempt to resolve the crucial issues affecting the new unified patent system, the casual and triumphant atmosphere was a trifle unsettling.

As if written by Armando Iannucci himself, the only jovial moment occurred just before the signing when some attendees, unbeknownst to them, left their microphones on as they went through the list of representatives from the Member States that would be signing. There appeared to be some questioning as to whether certain representatives were male or female and some comments about where Michel Barnier would be choosing to sit.

Ireland's Minister for Jobs, Enterprise and Innovation - Richard Bruton - commenced the proceedings by stating:

"I think this is a very significant occasion. I know that this has been a product of work over many years - indeed over almost 40 years from when the idea was first nurtured as a concept. I would like to welcome Michel Barnier who has prioritized patent reform. We were discussing this morning in the Competiveness Council the strategies for growth and the importance of the single market and here I think is a very tangible expression of creating a single market in a very important area - the area of patents - where clearly in many of these benchmarking rankings we fall behind competitors. Its an area where such actions as those proposed will significantly reduce costs for SMEs and also costs of enforcement. So I think this is a significant day. I know that there are very many people who have contributed this. I think there is a saying "If we see far its because we stand on shoulders of giants" and there have been many giants who have attempted to bring what we are now achieving today to fruition. We are very fortunate to be here to sign on behalf of our Member States this important piece of new architecture within the European Union. I would like to thank the Cyprus Presidency, in particular, who put a lot of work on this….and the role of the European Parliament who has been a significant player...I would like to invite the representatives to sign the Agreement on the Unified Patent Court…beginning with Belgium."

And so with that, the thick book containing the Agreement made its rounds around the table to 24 Member States who put their John Hancock on its pages (save, of course, for Poland and Spain who passed the book on - Bulgaria also has not signed but is expected to do in the coming days).  Soon after, Vince Cable (who was the hand the signed the Agreement on behalf of the UK), hailed the Unified Patent Court Agreement as providing a big boost for London who will soon be hosting a branch of the Central Divsion of the Court.  He stated:

"The decision that London should host this new court shows not only the confidence in our legal sector but also the strength of the UK's intellectual property (IP) regime. Agreement on a unified patent regime is a good result as it will mean defending a patent across Europe will now be much simpler."

Although the proverbial fat lady has taken the stage, she hasn't quite sung yet as it is now onto the pesky matter of ratification.  Before the UK ratifies, CIPA, the IPFed and other professional bodies have written to the IP Minister Lord Younger "calling for a proper, evidence-based economic impact assessment of the effect on the UK economy, to be carried out and made widely available before Parliament is asked to ratify the UPC Agreement."  Another call to tender, anyone?

The next meeting to discuss Member States' ratification and to establish the infamous Preparatory Committee is planned for next Wednesday (Deirdre Kilroy kindly reminded the AmeriKat that Ireland will have to undertake a constitutional referendum in order to ratify the Agreement).   The AmeriKat hopes that soon after next week's meeting in Brussels, we can finally enjoy the public consultation of the Rules of Procedure. 

In the meantime, the UPC geeks (of which the AmeriKat is one of them), are trying to clarify the drafting of Article 83 of the Agreement which relates to the transitional measures and the opt-out procedure. Article 83 reads:

ARTICLE 83

Transitional regime

(1) During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.

(2) An action pending before a national court at the end of the transitional period shall not be affected by the expiry of this period.

(3) Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.

(4) Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.  . .

The question currently being debated is if you opt-out your existing European patents from the "exclusive competence" of the UPC does that mean that the UPC nevertheless enjoys "non-exclusive competence" shared with the national courts? The effect would be that even if you opt-out your patents from the UPC's exclusive competence, cases could still be brought in the UPC. The AmeriKat thinks the intention and structure of the Article favors the interpretation that "exclusive competence" just means "competence" - otherwise what is the point of an opt-out procedure - but sloppy drafting is the enemy of clarity and reason. If readers have any thoughts on the interpretation of Article 83, please let the AmeriKat know. She can then bore/entertain you with her interpretation of Article 83.