The Impact of Brexit on Unitary Patent Protection and Its Court
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Max Planck Institute for Innovation and Competition Research Paper No. 18-20 Matthias Lamping Hanns Ullrich The Impact of Brexit on Unitary Patent Protection and its Court Max Planck Institute for Innovation and Competition Research Paper Series Electronic copy available at: https://ssrn.com/abstract=3232627 Electronic copy available at: https://ssrn.com/abstract=3232627 Matthias Lamping • Hanns Ullrich Editors The Impact of Brexit on Unitary Patent Protection and its Court Electronic copy available at: https://ssrn.com/abstract=3232627 Editors Dr. Matthias Lamping Senior Research Fellow, Max Planck Institute for Innovation and Competition, Munich Visiting Lecturer, Ludwig Maximilians University of Munich and Europa-Kolleg Hamburg Prof. Dr. Dr. eh. Hanns Ullrich Affiliated Research Fellow, Max Planck Institute for Innovation and Competition, Munich Professor Emeritus, Universität der Bundeswehr, Munich Visiting Professor, College of Europe, Bruges Imprint Max Planck Institute for Innovation and Competition, 2018 Marstallplatz 1, 80539 Munich, Germany ISBN 978-3-00-060570-3 DOI 10.17617/2.2632587 Published under Creative Commons by-nc.sa 3.0 Germany Licence https://creativecommons.org/licenses/by-nc-sa/3.0/de/deed.en Electronic copy available at: https://ssrn.com/abstract=3232627 CONTENTS General Introduction .......................................................................................... 7 Hanns Ullrich and Matthias Lamping The European Union’s Patent System after Brexit: Disunited, but Unified? .. 25 Hanns Ullrich I. Introduction .................................................................................................. 26 1. EU intellectual property: The special case of unitary patents ...................... 26 2. The impact of Brexit on the system of unitary patent protection ................. 29 II. Unitary patent protection everywhere? .......................................................... 32 1. The background ........................................................................................ 32 2. The unitary patent system post Brexit ........................................................ 43 3. A common patent law and policy of the EU and the UK?........................... 55 4. The Unified Patent Court ........................................................................... 92 III. Conclusion .................................................................................................. 112 The Unified Patent Court, and How Brexit Breaks It .................................... 117 Matthias Lamping I. Introduction ................................................................................................ 118 1. General remarks ...................................................................................... 118 2. The state of affairs ................................................................................... 122 3. Opinion 1/09 ........................................................................................... 125 II. The situation post Brexit ............................................................................. 132 1. Preliminary rulings .................................................................................. 133 2. Governance ............................................................................................. 151 3. Uniformity of law .................................................................................... 175 III. Conclusion .................................................................................................. 179 Electronic copy available at: https://ssrn.com/abstract=3232627 Electronic copy available at: https://ssrn.com/abstract=3232627 GENERAL INTRODUCTION At present, patent protection for inventions in the European Union essential- ly rests on the national law of Member States. Whether granted by national patent offices or by the European Patent Office (EPO), an organ of the inde- pendent European Patent Organisation, the right to exclusively exploit the patented invention represents a territorially limited and independent title to protection whose substance is determined autonomously by each Member State.1 It took the EU and its Member States more than half a century – eventually by way of enhanced cooperation under Art. 20 TEU2 – to intro- duce by Reg. 1257/20123 the so-called European patent with unitary effect (unitary patent) with as its complement an Agreement by Member States on a Unified Patent Court (UPC and UPCA).4 While Reg. 1257/2012 is already in force, it will not enter into application before the entry into force of the UPCA (Art. 18(2) Reg. 1257/2012). The UPCA has been ratified by 16 Member States including the United Kingdom, but to enter into force it still needs to be ratified by the Federal Republic of Germany.5 The immediate impact of Brexit on unitary patent protection will be that Reg. 1257/2012 will cease to apply to the UK (Art. 50(3) TEU) on the date of the entry into force of the withdrawal agreement, or at the end of the tran- sition period as provided for by the withdrawal agreement, respectively.6 By contrast, the impact of the actual withdrawal of the UK from the EU on the UPCA is less clear. While the UPCA has been concluded under its auspices, 1 It is only in the field of biotechnological inventions that the EU has harmonised na- tional patent law by Arts. 8 to 12 of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions, OJEC 1998 L 213, 13. 2 Council Decision (2011/167/EU) of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection, OJEU 2011 L 76, 53; 3 Regulation (EU) No. 1257/2012 of the European Parliament and the Council of 17 September 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, OJEU 2012 L 361, 1. 4 Agreement on a Unified Patent Court of 19 February 2013, OJEU 2013 C 175, 1. 5 Art. 89(1) UPCA. Ratification by Germany has been suspended in view of a com- plaint brought to the German Federal Constitutional Court (Bundesverfassungsgericht, BVerfG); see Ullrich, infra, n. 70; S. Broß and M. Lamping, Das Störpotenzial des rechtsstaatlich-demokratischen Ordnungsrahmens am Beispiel der europäischen Pa- tentgerichtsbarkeit, GRUR Int. 2018 (forthcoming); a shortened English version has been published in 49 IIC 886 (2018). 6 Arts. 121 et seq. of the Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community of 19 March 2018 (TF50 (2018) 35; available here). 7 Electronic copy available at: https://ssrn.com/abstract=3232627 General Introduction the EU is not a party to the Agreement. It is an agreement between EU Member States only by which they purport to establish a patent judiciary that is common to them and has exclusive jurisdiction on litigation concern- ing the validity and infringement of unitary patents and generally of national patents granted by the EPO. There is a controversy about the consequences that the UK’s loss of membership in the EU will have for the UK’s ability to participate in the UPC judiciary. Several authors and apparently large parts of the patent law community hold the view that the UK may remain a con- tracting state to the UPCA post Brexit, albeit only upon some – minor? – adaptation of its rules on adherence. This also seems to be the position of the UK itself, which after its notification of withdrawal on 29 March 20177 ratified the UPCA, giving notification of this on 26 April 2018. In fact, the UK “intends to explore staying in the Court and unitary patent system” after it leaves the EU.8 Staying in the unitary patent system as well is a position that is generally defended by the advocates of the continued participation of the UK in the UPC’s judicial sytem. They suggest that uni- tary patent protection could be extended to the UK post Brexit by way of an ordinary agreement under public international law, provided only that it obliges the UK to respect the primacy and autonomy of EU law. Unitary patent protection would, thus, constitute an exception to what is provided for in the current draft withdrawal agreement,9 namely that all existing uni- tary titles of EU intellectual property (i.e. Union trade marks, Community designs and plant variety rights) will and must be transformed by the UK into equivalent national titles of protection. New unitary EU titles granted post Brexit will not extend to the territory of the UK. The principal rationale underlying the claim to making an exception in favour of unitary patents seems to be twofold. First, in contrast to Union trade marks, Community designs and plant variety rights that are granted by the European Union In- tellectual Property Office (EUIPO) and the Community Plant Variety Office (CPVO), the unitary effect attaches to a European patent upon request only once it has been granted by the international EPO. Second, validity and in- fringement of unitary patents is to be adjudicated solely by the UPC as a court common to the Member States (Art. 1(2) UPCA) rather than by the various national courts of Member States that have jurisdiction over Union trade marks and Community designs as Union trade mark or design courts or over plant variety rights as ordinary courts of Union law. 7 Theresa May, Prime Minister’s letter to Donald Tusk triggering Article 50, 29 March 2017 (available here). 8 Her Majesty’s Government,