The Unified Patent Court and the UK after Brexit

Can the UK still play a role in the UPC after Brexit and can the CJEU accept references from the UK? Alan Johnson (Associate) looks at the possible answers to these and other UPC-related issues.

As readers will be well aware, the UK ratified the UPC Agreement (‘UPCA’) on World IP day 2018, leaving only Germany as a mandatory ratifying country holding the key to the start of the UPC. Equally well known is that the challenge before the German Constitutional Court (the BVerfG) continues to stall Germany’s ability to ratify. Whilst little hard information is available from the Court, based on the progress of cases in the list, a decision in 2019 now seems unlikely, but it is nonetheless reasonable to expect a decision within a relatively few months. Further, most commentators expect the Court to dismiss the complaint. Hence, the German Government may well, within perhaps six months, be in a position to give the green light to the commencement of the UPC by depositing its instrument of ratification of the Protocol on Provisional Application and some months thereafter deposit its instrument of ratification of the UPCA itself. This leads to a consideration of the impact of Brexit on the decision to be taken by Germany (presumably in conjunction with the other Contracting States) because although the UK has ratified the agreement, and although it is an international treaty technically unconnected with the EU, the UK’s changed status is far from irrelevant for a variety of reasons.

The most recently stated position of the German Federal Government on the effects of Brexit on the future of the UPC (as stated on 31 July 2019 in response to questions from the Free Democratic Party) was as follows:

“The question of the exit of the United Kingdom from the European Union (so-called Brexit) and its effects on the European patent reform play an important part in the subsequent implementation process of the Treaty on a Unified Patent Court. The actual and legal effects of an exit must be reviewed in relation to the Treaty and coordinated at European level. Currently, this opinion forming process is not yet complete, not least because significant factors of the likely exit are currently not yet known.”

Whilst non-committal, one thing this statement tells us is that the type of Brexit is regarded as relevant to what happens next. So what will be the position if the UK leaves the EU without a deal? Various commentators, notably Ullrich and Lamping  (Max Planck Research Paper No. 18-20) have argued that there are all manner of legal question marks over the commencement of the UPC. Of these, those which deserve some analysis are (in summary):

Can the UK, as a non-EU state participate in the UPC? This raises several interlinked issues:

• Are the references in the UPCA to EU member states an issue?
• Can the Court of Justice of the European Union (‘CJEU’) accept references from the UPC with the UK participating?
• What of the fact that the UK will not be subject to the Brussels Regulation?
• Are there any issues concerning the governance of the UPC if there is a need to modify the UPCA to align it with developing EU law?
• Can the UK, as a non-EU state participate in the unitary patent?

Are the references in the UPCA to EU member states an issue?

The UPCA was drafted as an agreement between EU member states. The UK’s new status outside the EU is a potential issue, therefore, but hardly one of substance. A Protocol could be adopted by the Contracting States saying that references to an EU member state should be construed as references to a state as of the date of execution of the agreement (in 2014). That should be an end to the issue.

Can the CJEU accept references from the UPC with the UK participating?

This is a matter of some controversy. Under article 267 TFEU, the CJEU may accept references from the UPC (under article 21 UPCA) if it is a national court of a member state. Despite being an international court in the sense that multiple nations have agreed (in the field of patents) to delegate their national jurisdiction to the UPC, it can properly be regarded as a national court. However, one view is that the CJEU can accept references only from a national court of member states exclusively. The other view is that provided it is a national court of some member states, that is sufficient when the uniformity and autonomy of EU law is safeguarded – in this case by the provisions of the UPCA (to which the UK has signed up) – which include accepting the primacy of EU law. Ultimately this is a matter, however, which only the CJEU itself can determine. No mechanism exists to ask the CJEU for a preliminary ruling before UPC commencement. However, what is certain is that any issue could be dealt with by an agreement on the UPC between the UK and the EU. Hence, even if there is a no-deal Brexit, a subsequent agreement could fix the problem. Therefore, if Germany would wish to be risk averse and would not want the UPC to start with the UK as a participant in case the system was later declared illegal, it could promote the idea of an agreement on this issue (be it a standalone agreement or a part of a larger post-Brexit agreement).