December 14, 2016
After months of uncertainty following Brexit, on Tuesday 28 November the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA).
The UPCA must be ratified by at least 13 EU countries. France, Germany and the UK must all ratify the Agreement to bring it into force. Until a couple of weeks ago, 11 countries had ratified the Agreement, with the UK’s position undecided. Germany still remains to declare its intentions on the ratification process.
In a statement on November 28th , UK minister for intellectual property, Baroness Neville Rolfe, said: "The new system will provide an option for businesses that need to protect their inventions across Europe". She also said that as long as the UK remains in the EU, they will “continue to play a full and active role” in the implementation of the system.
Over the coming months, the UK will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible. This latest announcement means that the UPC could come into force by the end of 2017.
Despite this announcement, a lot of uncertainty lingers about the long-term future of the UPCA. In fact, it is unclear whether or not it would be possible for the UK to continue to participate in the UPCA after leaving the EU, as stated in the opinion of Brick Court Chambers:
“We consider that it would be constitutionally possible for the UK to continue to participate in the UPCA after Brexit, […]”. However, there is a risk that the CJEU could reach the opposite conclusion. Furthermore, a question remains unanswered about what will happen to patents that will have been granted with unitary effect before Brexit, if the UK does not remain in the system.
In any event, now is a good time to consider the entire post-grant administrative process and, specifically, strategies for managing European patents in future. Should the UPC come into operation, more options will be available for the post-grant process and applicants and their representatives will need to decide whether they want their European patents to be subject to the UPC or to the national courts.
Applicants willing to adopt the national courts route will need to proactively opt-out of the UPC, paying particular attention that the correct ownership is mentioned in the UPC case management system. Envoy’s sister company Valipat is able to assist European patent attorneys for any change needed in this field through its Recordals Services department.
To explore estimated costs of the multiple combinations available for European patents in the future (including anticipating a country-by-country maintenance strategy) Valipat has also developed an easy-to-use online cost calculator – available to all our clients.
Whichever route(s) IP professionals wish to undertake, Valipat and Envoy can help them assess and implement their post-grant process. This includes preparation of the translations to be filed under the Unitary Patent system, the implementation of validations in any non-particpating jurisdications or the payment of annuity fees.
Both Valipat and Envoy strive to act as a back-office to European patent attorneys in order to ensure an efficient and streamlined process.
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