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Monday, 20 May 2013

Quibbling over minutiae? Or has something been overlooked? Concerns over UK implementation of the UPC Agreement and Unitary Patent

This Kat has previously posted a couple of concerns about the implications of some details of the unitary patent and the Unified Patent Court Agreement - see here and here.

Now this moggy is concerned about the UK ratification of this legislation.  He has been reading the recently published Intellectual Property Bill, and now he has just seen the interesting comments from Alan Johnson posted by blogmeister Jeremy below.  But this does not address a further issue that has been in the mind of this feline. It may, prods Merpel, be a small matter, but we are now at the stage where most of the large matters have been raised, and the small matters too require attention.

The Bill gives (at Clause 16) the Secretary of State power to make provisions that are needed to give effect to the UPC Agreement (subject to the safeguard that any draft order must be laid before and approved by each House of Parliament). However, there is no power in the Bill to make any order in relation to the Unitary Patent.

Nevertheless, Article 4(2) of the Regulation creating the Unitary Patent requires Member States to make arrangements to remove the national effect of a European patent once it has unitary effect.  It states:

The participating Member States shall take the necessary measures to ensure that, where the unitary effect of a European patent has been registered and extends to their territory, that European patent is deemed not to have taken effect as a national patent in their territory on the date of publication of the mention of the grant in the European Patent Bulletin.
The IPKat can see no such proposed measures in the Bill.  And he cannot see how the UPC and the Regulation can properly come into effect without such arrangements having been made.

"But EU Regulations have direct effect" the IPKat hears his readers cry. That may indeed be true, but surely a Regulation requiring Member States to perform an activity to then has to be followed by the Member States performing the required activity -  in this case, making changes to their national law. Alternatively  if the UK does not introduce any such measure, does it mean that a Unitary Patent will keep its national effect in the UK, in additional to its trans-EU-(minus a few countries)-effect?

Merpel suggests that it is possible that the Government is planning a further Bill, but it seems to the IPKat  hardly likely that HMG is intending to make parliamentary time for the passing of two separate intellectual property Bills when one would clearly do. Can it be that the terms of the Regulation have not been properly considered? Or is there something that your humble servant has missed?

As usual, dear readers, at this point the IPKat turns over to you for the wisdom of the crowd.

7 comments:

Wouter Pors said...

Dear IPKat, that provision is not a condition for the coming into force of the Regulation. If an application for unitary effect is filed after grant, the patent does have that unitary effect. Countries are supposed not to offer the option of additional national registration, either as a traditional European patent nor, in fact, as a national patent. Most patent laws already have provisions against having national patents in addition to traditional European patents, but Poland for instance does not. I understand this provision as a strong encouragement to take care of the issue, but it does not intend to have direct effect; I believe the idea was probably not to encroach on national souvereignty, but to expect that member states would pick this up themselves.

Again, if the UK fails to do so adequately, that does not slow down the implementation of the system.

Wouter Pors, Bird & Bird

Justin Watts said...

There is no need for primary legislation in the UK in relation to the European Patent with Unitary Effect. The answers are in the European Communities Act 1972. s2(1) renders all directly enforceable EU legislation enforceable in the UK as a matter of UK law. s2(2) enables the government to make implementing regulations by Order in Council. There is therefore no reason why any of this material should or would be in UK primary legislation.

Darren Smyth said...

Thank you Wouter and Justin. I now agree with Justin - the Regulation is EU legislation so does not need enabling legislation - an Order can simply be made. The Agreement is not EU legislation and so requires enabling legislation before an Order can be made. In either case, we await the Order. In the meantime, I also received this response from Alan, which is jolly amusing, so I would like to share:

An interesting problem, and one which requires a purposive construction of the provisions. If so, we must start with the fact that the words of new s.88A are of the Government’s own choosing, and undeniably refer only to the UPC and not the Regulations. What though would the person skilled in the art of the UPC and Unitary Patent have thought the Government intended the words to mean? Is there any reason to think the Government intended to be limited in its powers to implementing the UPC only, and not also the Regulations? Would they not expect that the Government intended that there only be one Act of Parliament giving effect to the whole of the new regime? Looked at in this way (and bearing in mind that the Regulations and the UPC agreement are regarded as a package by everyone but the Italians and the Poles) I should have thought that the power in s.88A(5) can safely be used to implement the Regulation also. Certainly as I understand it, this wide power is intended to be used to enable to SI to make all the necessary changes. However, since it would be open to someone (would the Spanish Government have locus in this?) to challenge the legality of the provisions in the SI effecting this change, maybe the best solution is for the Government to make a specific reference to the Regulations as well as the UPC in sub-section 1 as it passes through the reading stages in the House of Lords in the next few weeks. If so, maybe we should call it the IPKat amendment?

PS - I have never liked the term “person skilled in the art”, so can we henceforth refer to the notional “Person Skilled on [the] Unitary Patent” as the P-SoUP? - I think you know where I am coming from....

Ralf Grahn said...

I would like to point out a separate issue. Denmark and Ireland are going to arrange referenda, because the agreement on the UPC is seen as transferring sovereignty.

The UK has a "referendum lock", but where is the discussion?

TJ said...

@Ralf Grahn, I raised this question in a comment on another post back in 2010. There was also a critical blog on the Daily Telegraph website in December 2010, but the referendum question doesn't seem to have been raised more recently. Perhaps UKIP might take it up?!

Anonymous said...

With regard to a referendum, the UPC was created by inter-governmental treaty and so is not, strictly speaking, the transfer of sovereignty to the EU. Thus - arguably, at least - it does not fall within the terms of the referendum lock:

http://www.iam-magazine.com/Blog/Detail.aspx?g=4a4b6b8e-7474-413b-8a0a-f98ef98ee991

Anonymous said...

The EU Act 2011 (i.e the referendum lock) only makes a referendum mandatory for a change to TEU or TFEU (i.e. Maastricht and Rome) only. So if the UPCA had been an EU regulation the EU Act 2011 still wouldn't apply

Personally I think there's some logic in asking for a group of people's permission to change the TEU in such a way that power is transferred from politicians elected by that group of people to other politicians elected by a different group of people.

On the other hand having a referendum on transfer of power from one group of independent unelected judges to a second group of independent unelected judges seems like a total waste of time.

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