Another Step Towards the UPC

On 3 March 2016, the UK Government took another step towards the ratification of the Unified Patents Court (UPC) Agreement.

In short, the UPC Agreement is directed to providing a common court having exclusive competence to hear infringement and validity actions for both classical European Patents and the new "unitary" patents with jurisdiction across Contracting Member States. For the former though there will be the possibility to opt-out of the exclusive jurisdiction of the UPC for an initial period of seven years.

In order for the UPC Agreement to come into force, it must be ratified by at least 13 of the participating countries and the ratifying countries must include Germany, France and the UK (based on the assumption that the UK will stay in the EU).  The UK has recently taken another step towards ratification; legislation implementing the UPC Agreement into national law was approved by Parliament on 3 March 2016.

The Patents (European Patent with Unitary Effect and Unified Patents Court) Order 2016 is a statutory instrument which amends the Patents Act 1977 to comply with the UPC Agreement. The provisions of the amended UK Patents Act 1977 will only come into force when the UPC Agreement comes into force, which is expected in early 2017. In brief, the statutory instrument implements the UPC Agreement by adding references to unitary patents and the UPC Agreement to existing sections of the UK Patents Act 1977 and adding Schedule A3 and Schedule A4 to the Act.

As well as amending the UK Patents Act 1977 to comply with the UPC Agreement, the statutory instrument adds two new exceptions to infringement to the Act, namely the "computer software exemption" which is directed to certain acts involving the use of information from decompiling software to allow interoperability and the “plant breeder exception”, which is directed to the use of biological material for the purpose of breeding, or discovering and developing other plant varieties. It is notable that the “computer software exemption” applies to EP patents and unitary patents only, while the “plant breeder exception” applies to EP patents, unitary patents and GB patents.

The omission of the “computer software exemption” for UK national patents is intended to provide a safe haven for software related inventions and is hoped to lead to a rise in national patent applications in this area of technology. This issue is due to be reviewed within 5 years of entry into force of the UPC Agreement.

Another point of interest is that there is some disparity between the definition of infringement and exemptions from infringement provided by the UK Patents Act 1977 and the definition provided by the UPC Agreement. It is not entirely clear which definition will be applied in practice, and as a consequence there is some uncertainty in the extent of protection offered by the UK part of an EP patent and unitary patents. As it stands, is seems possible that in some instances a business bringing an infringement action before a UK Court, which applies the provisions of the amended UK Patents Act, may face a different outcome to than if the action had been brought before the UPC.

In view of the above, a unitary patent, classical European patent and national GB patent may well provide a different scope of protection following entry into force of the UPCA; this is something businesses will need to take into consideration when deciding which type of protection best suits their commercial interests.  If you would like some further information about the potential impacts of this development on your business please do not hesitate to contact us.