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Friday, January 22, 2016

Unified Patent Court and Unitary Patent: what UK and NL can learn from eachother

Two days ago, I have placed myself in the perspective of the Isle of Man, and 5 islands of the former Netherlands Antilles in order to discuss the different modes of implementation for the unitary patent and the unified patent court the Netherlands and the UK have chosen with regards to their "dependent territories". Todays post is an advice to both governments. Their legislative proposals both have merit to some extent and they could lear from each other. Combined with a good "Treaty-notifier" advice, in my opinion the system should be implemented like this:

Unified Patent Court: Netherlands should listen to the UK

The Unified Patent Court Agreement (UPCA) is silent on whether it can be extended to dependent territories. While regarding European patents without unitary effect its decisions have effect on the territories, it is not clear whether infringement actions on the territories would be covered. The preambule starting with characterisation of the signatories as "Member States of the European Union" could suggest that the territorial scope is that of the EU, and thus does not cover the territories. 

The UK bluntly states that it will extend the treaty to the Isle of Man, and thus the UPC will full apply. It seems a judgement call whether this is possible, in which the depositary (Council of the EU) has a final say, but if they do (and I think they will, in treaties, a lot of latitude is given with regard to extensions generally when the treaty is silent on it), then it is by far the easiest way to keep the European patent "uniform" within UK+Isle and NL+Curacao+CaribbeanNetherlands+SintMaarten. 

Unitary Patent: UK should listen to the Netherlands

The Unitary patent is governed by the Unitary Patent Regulation, an EU Regulation, which territorial scope is the territorial scope of the EU and excludes these territories. The UK may state that by ratifying the UPCA, the territorial extent of the Unitary Patent Regulation will extend to the territories, but that's would be the first time the territorial scope of a Regulation is extended in this way [the EU, NL, and UK could enter into a treaty of course that extends certain regulations to the territories, but that's a long term solution]. The Dutch made a more clear interpretation of the interaction of the Unitary Patent Regulation with the European Patent Convention: if the "national" European patent without unitary effect will be assumed never to have taken effect when the unitary effect is granted, that has no effect for the territories not covered by the unitary effect. In other words, the unitary effect does not have the effect that the national European patent disappears, but its territorial scope is reduced to the Isle of Man and remains in existence as national European patent under national law. In the UK this is the EP-unitary and the EP-UK coexist, where the latter is best identified as EP-UK-"EPCnonEU" ("European patent in effect as a national UK patent with a territorial scope of the territory under the EPC, but not the territory of the EU: EP valid in the Isle of Man only), to identify its -very- limited territorial scope as a residual national European patent. 

Law applicable to EP-UK-"EPCnonEU" and EP-NL-"EPCnonEU": a suggestion from me

National law still applies to the EP-UK-"EPCnonEU" (EP Isle of Man) and the corresponding residual Dutch national residual European patent (EP-NL_"EPCnonEU"). That means separate renewal fees etc and thus extra costs and handling. Luckily, if implemented as described, the UPC has jurisdiction. However -unlike the corresponding unitary patent- during the transition period the residual European patent may also be tried in national courts. 

In order not to make the treatment of residual European patents different from the unitary patent, I propose to include regulations in the national laws, in which the residual European patents as much as possible have the same effect as the unitary patent. That means they apply the unitary patent regulation as a matter of national law. The implementation should make sure that the residual European patents are really "glued to the unitary patent" by the following provisions regarding residual European patents:
-Exclusive competence for the Unified Patent Court (also during the transition phase)
-any change in the text of the unitary patent will have automatically the same effect for the residual European patents
-the law applicable to residual European patents is  that of unitary patents (as an object of property)
-residual European Patents can not be separately owned, morgaged etc. The ownership etc follows automatically that of the unitary patent
-a license of a unitary patent including the territory of the main office of UKIPO, automatically also is covering the Isle of Man
-a license of a unitary patent including the territory of the main office of the Dutch national patent office, automatically also is covering the Curacao, Sint Maarten and the Caribbean Netherlands. 


Let's see if this is implemented. We haven't seen the statutory instrument for implementation of the Isle, so it is still possible this was planned all along (although that is not what is suggested in earlier documents). Furthtermore, the final proposed legislation in the Netherlands is unknown and still unpublished. It furthermore can be amended by parliament. 

In other words, there  is still time to implement this and have the territories covered in a decent and consistent way. 


  1. Implementation on the UK is likely to be a complete mess. CIPA recommended not extending the UP or UPC to Isle of Man, but treating European patents as being automatically registered in the Isle of Man.

    Worse is that under the proposed UK SI there will be three different infringement laws. This is a complete mess.

    1. Meldrew, thanks for that explanation. I think it is problematic as well (as I have shown), but think non extending UP or UPC is also a problem. It means you'd have to go to different judges to get your unitary patent infringement solved. But indeed, it seems in line with many other territories the UK has responsibility for.

      Another question is: does the unitary patent regulation cover Gibraltar? I can read the regulation both ways (and assume the UK government just assumes Gibraltar is out, as you can not get unitary effect on something that doesn't exist (EP-UK-Gib)....