What is happening in Europe – the political ramifications of Brexit on the European Patent System

Monday 13th February 2017

In the July 2014 Patent Prose article we considered plans to set up a unitary European patent and the problems being encountered back then. The latest problem, that few saw coming, is Brexit.

This article is published in Chemistry in New Zealand (CiNZ), the journal of the New Zealand Institute of Chemistry (NZIC).  The NZIC represents members involved in the chemistry profession including those who study, practice, teach, promote and manage chemistry.


The background

Presently, you can file a single European patent application at the European Patent Office that covers any one or more European Patent Convention (EPC) member states.  This application is examined centrally rather than having separate examination in different European countries, potentially saving time, effort and money. Once the European Patent Office decides that an application is allowable, you still have to go through formalities in each of the European member states that you want protection in. The result is a separate national patent in each selected European country. Due to the costs associated with the unbundling of the European patent into national patents and ongoing renewal fees, many European patents only become effective in 3 to 5 countries out of a possible 38.

 There has been a long running proposal to set up a unitary European patent which would mean a single patent could cover multiple EPC member states.

What now?

The existing European Patent regime involving the unbundling of a European patent into separate national patents is separate from the agreements and membership of the European Union (EU).  Brexit is the UK’s exit from the European Union, not the EPC.  The problem is that the unitary patent system is being implemented by the EU.  Consequently, while Brexit will have no or little direct impact on the ability to use European patents to obtain protection in the UK, the likelihood of being able to use the unitary patent system in the future to cover the UK is less clear.

So what will happen if the unitary European patent goes ahead? The UK would be unlikely to be a part of it as it currently stands because it is exclusively for EU countries. However, while the UK is still in the EU, they are still part of the process.

As part of the unitary European Patent system a Unified Patent Court also needs to be set up. A patent that covers a number of countries also needs to be enforced (i.e. suing a party that infringes the patent) or invalidated centrally, which means having a court with jurisdiction over all the countries. Prior to Brexit, the plans for the Unified Patent Court were advanced. An agreement on the structure of the new court was signed by 25 European Union States on 19 February 2013. But, in order for the agreement to go into force it still needed to be ratified by at least 13 states, including France, Germany and, significantly, the United Kingdom. The plan also included having a division of the Court that dealt with chemical-/pharma-related patents located in London.

In November last year the UK intellectual property minister, Baroness Lucy Neville-Rolfe, indicated that the UK would go ahead and ratify the agreement on the Unified Patent Court in order to enable the plan to move ahead. Then once the UK started the process to leave the EU they could withdraw from the system or negotiate a way to continue to be part of it.

The present uncertainty stems from when the UK will start the process to leave the EU, whether they will want to negotiate to be part of the unitary European patent and whether it is even legally possible for a non-EU country to be party to the Unified Patent Court.

There has also been comment that a unitary European patent that does not include the UK will be less attractive. Will the other members of the EU still want to go ahead with the unitary European patent without the UK?

For the time being there are no conclusive answers to any of these questions and with the UK and the EU engaged in tough negotiations on their future relationship, there presently seems little political will to lay their cards on the table.

We will keep you updated of any further developments.

If you have any queries regarding intellectual property related matters (including patents, trademarks, copyright or licensing), please contact the author.

This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.

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