Unified Patent Court: will the dream ever come true?

We have been told for years now that “the Unified Patent Court will start next year” – yet, 2019 is here and we have no serious update on the matter. Furthermore, the unpredictable turmoil in the UK Parliament is making the scenario even more fuzzy, as this was possible. However, rumors have it to happen soon. Then, in order to be ready to welcome what has been said to be the greatest change in patent law, since, well, ever, let’s try to wrap it up.

The “Unitary Patent Package”

The Unitary Patent Package consists of two EU regulations (Regulation (EU) No 1257/2012[1] and Regulation (EU) No 1260/2012[2]) and an international agreement – the Agreement on a Unified Patent Court (UPCA)[3]. The unitary patent system, essentially, will feature a patent with unitary effect and a unified patent court which will have jurisdiction on the matter.

The main feature of the new patent system is to be found in the uniformity of the protection: indeed, contrary to the status quo in Europe, where patents are granted based on a bundle of national proprietary rights and must – therefore – be enforced in each single jurisdiction, the new system will have patents granted with unitary effect and will – then – make them enforceable across Europe with a single action before a single court, the Unified Patent Court. The outcome will be that all decisions taken by the UPC, (i.e. injunctions, damages, validity) will have pan-European effect.

The Unitary Patent, however, must not be confused with an European – meaning European Union – right. Unlike the EU trade mark or the registered Community design, the Unitary Patent is not an autonomous EU right. Indeed, the Unitary Patent is based on – what is known as – European patent, a patent granted by the EPO under the EPC’s rules and procedures.

However – and here lies the great new – the Unitary Patent features the possibility for the proprietor to request, after grant, a unitary effect, attributed for the territories of the participating Member States. In other words, a Unitary Patent has unitary character meaning it provides uniform protection and has equal effect in all the participating Member States.

The Unitary Patent Package also covers the Unified Patent Court, a centralized, specialized and highly qualified court. The potential benefits of such a system easily stand out. Under the current legal system there is a centralized pre-grant procedure, however no centralized post grant system is to be found.

Indeed, the first achievement of the unitary patent system is that it creates a “one-stop shop for the administration of Unitary Patents, i.e. for obtaining, maintaining and managing them”^[4]. However, the benefits do not stop here. The legal uncertainty stemming from a legal system which allows the same patent (and yes, we are talking about the very same claims) to be found valid in one country and invalid in the next one is – happily – overcome by a centralized litigation system which facilitates the development of consistent jurisprudence. The most significant shortcoming of the current legal regime is, indeed, caused by such fragmented litigation system which results in conflicting decisions of national courts: the UPC’s ruling will – finally – have effect in the territories of each member states that have ratified the UPCA, thus making a major step towards reducing fragmentation.

To make it looking even more attractive, the unitary patent regime significantly lowers the costs of filing, therefore making patent protection more accessible and more effective, boosting innovations and inventions.

In the words of the EPO itself “The Unitary Patent and the Unified Patent Court are the building blocks which will supplement and strengthen the existing centralised European patent granting system. They will offer users of the patent system a cost-effective option for patent protection and dispute settlement across Europe”[5].

The Unified Patent Court: where are we? The constitutional complaint before the Bundesverfassungsgericht

The two EU regulations have been in force since January 2013, however they will only apply from the date of the entry into force of the UPCA, being the UPC, as already pointed out, the third element to the Unitary Patent Package.

Despite being in the final stage of establishing the UPC, the European Patent Office and the participating countries are not yet to implement the new legal system.

To understand the reasons behind such delay we must look at two factors: the German constitutional complaint and Brexit.

To enter into force, the Agreement on the Unified Patent Court, in accordance with art. 89, must be ratified by 13 member states, including the three Member States with the highest number of European patents, namely the UK, France and Germany. However, the German constitutional court requested the President of the Federal Republic of Germany not to proceed with the ratification of the UPCA – which has already been approved by the German Parliament (Bundestag) and the German Federal Council (Bundesrat) – pending the constitutional complaint filed before the German constitutional court [6].

The German ratification is stalled while the German federal constitutional court determines the constitutionality of the agreement.

The challenge before the German court has been filed against the European legal framework regulating the unified patent and the Unified Patent Court, which allegedly violates the German federal constitution in so far as it forces German undertakings to comply with European Union patent law that is incompatible with German law[7]. The appeal also contains an allegation of a breach of the requirement for a qualified majority in the Bundestag and Bundesrat, criticisms of the administration of the UPC and the extent of the independence of the judges.

While there is no certainty yet as to how the German court will express itself, chances are high that the compliant will be admitted for a decision. Dr. Ingve Björn Stjerna, the IP specialist who is said to be behind the constitutional complaint, pointed out that, given the separation of powers between the executive and the judiciary, the inference of the latter with the former’s competences would not be acceptable with reference to an inadmissible or manifestly unfounded application^[8].

If the Bundesverfassungsgericht holds that the UPCA is valid under the German Constitution, then Germany would be able to ratify the UPCA and consent to its provisional application.  Alternatively, the German federal constitutional court might decide that a reference to the CJEU is necessary.

Such scenario – besides the obvious delay it would cause to the implementation of the new patent law regime – brings us to the question about the compatibility of the UPCA with Union law. Indeed, the Damocles sword hanging over the new legal system will remain until the Court of Justice is able to express itself. It might, then, be envisaged that defendants in proceedings brought before the UPC will promptly demand that a preliminary ruling by the CJEU be obtained on the UPCA’s compatibility with Union law. However, it might be speculated that, given the scope of the legal reform and the long history patent reform carries on, the CJEU will not obstacles in its way.

Yet, is the German complaint’s decision edging any closer? The case is on the 2019 decision list[9], which was published on February 2019. The case has been allocated to Justice Huber, and it appears to be the fifth on the list. The BVerfG has announced[10] that its Second Senate will hand down its decision in the “Banking Union” case – the second in Justice Huber’s eight cases – on 30 July 2019.  The third case is the “EPO case” and there has been some speculation (based on a loose subject connection) that this may be heard together with the UPC case.  Whether or not that is so, and despite many cases in the BVerfG’s previous annual lists have been carried over to the next year, it does still seem possible that the UPC case will be decided this year[11].

However, the question – even if the BVerfG were to dismiss the appeal – is whether Germany would proceed to conclude the ratification process, since its decision may depend also on whether the UK can be a part of the new system.  And this question brings us to the second reason behind the delay we are facing: Brexit.

The Unified Patent Court: where are we? Brexit

Although the UK ratified the UPC Agreement in April 2018 and that the UK “intends to explore staying in the Court and unitary patent system” [12] after it leaves the EU, it might be argued whether this is possible.

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 transition period as provided for by the withdrawal agreement, respectively. 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, the EU is not a party to the Agreement.

However, the main issue relates to the new status the UK will have within the Unitary Patent regime. If the UK, a future ex member state, were to be a part of the UPC, it could be argued that the Court would no longer be “a court common to the Contracting Member States” of the EU (Art. 1(2) UPCA)[13].

The first argument to consider is – then – the impact that the presence of the UK would have on the primacy and on the application of EU law, including the possibility to make references to – and consequently be bound by – the Court of Justice. According to Art. 1(2) UPCA, the UPC is “subject to the same obligations under Union Law as any national court of the Contracting Member States”. It “shall apply Union law in its entirety and shall respect its primacy” (Art. 20 UPCA). However, once the UK has left the EU, the UPC ceases to be a common court. It becomes an international court. Extending unitary patent protection to the UK post Brexit may result in frictions and dysfunctionalities as it has to operate in two different legal environments, that of the UK and that of the EU. In respect of the same European patent, unitary protection will rest on public international law in the UK while it rests on Union law in the EU.

In addition, such unity risks being untenable. Unitary patent protection works only so long as it is interpreted and applied in the legal context of the EU (i.e. the legislation on intellecutal property rights, on competition, and so on). Yet, the unitary protection would operate in isolation in the UK’s legal environment, as no other EU legislation will apply there. Therefore, if the English legal surroundigs will ever come to diverge from EU policies, it might enable the UK to directly influence the development of EU law in the area of unitary patent protection and in related fields of intellectual property. By the same token, the UK may influce the scope of the protection itself, by blocking any amendment of Arts. 25 to 28 UPCA, i.e. of the rules on infringement and limitations that implement the exclusive right of unitary protection as established by Art. 5(1), (2) Reg. 1257/2012.

One more point is: whatever form the framework for the future relationship between the UK and the EU will take, it will cover divided markets and will have to satisfy both the UK’s claim to sovereign control of its market and the EU’s concern regarding its internal market. This means that unitary patent protection may produce different effects on the divided markets. Such argument lead us to the important question as to the impact the extension (or non-extension) of unitary patent protection might have on industry patenting practices and, as a result, on governmental patent policy in the UK and the EU.

However, the above considerations do not represent the one and only way to analyze the matter: indeed, some authors defend the thesis that unitary protection may be extended to the UK by way of an international agreement, provided only that it obliges the UK to respect the primacy and autonomy of EU law[14].

In any case, despite all the above considerations, one relative certainty is that there should not be any delay to the system’s start, due to practical problems, having the delays since the signature of the UPC Agreement in 2013 given plenty of time for preparations. Indeed, three years after the last recruitment campaign for legally and technically qualified judges of the Unified Patent Court, the UPC Preparatory Committee has launched a new round of recruitment for UPC judges[15].

[1]Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, available here: https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32012R1257

[2] Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, available here: https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32012R1260

[3] Agreement on a Unified Patent Court, available here: https://www.unified-patent-court.org/sites/default/files/upc-agreement.pdf

[4] EPO website, available here:

[5] https://www.epo.org/law-practice/unitary.html

[6] A. Pirani, “The Unitary Patent Court – Caution Ahead” in 5 Ct. Uncourt 5, 2018

[7] S. Celaire, “An Update On The UPC Agreement After The UK Has Finally Ratified It”, 2018, available here:

[8] I. B. Stjerna, “The European Patent Reform – Questions and answers on the German Constitutional Complaint proceedings”, 2018, available here:

[9] https://www.bundesverfassungsgericht.de/EN/Verfahren/Jahresvorausschau/jahresvorausschau_node.html

[10] https://www.bundesverfassungsgericht.de/SharedDocs/Pressemitteilungen/EN/2019/bvg19-043.html

[11] A. Johnson, “UPC case to progress up BVerfG’s 2019 case list”, 2019, available here

[12] Her Majesty’s Government, The Future Relationship between the United Kingdom and the European Union, White Paper, July 2018 (Cm 9593), sub 1.7.8, no. 151.

[13] M. Lamping, H. Ullrich “The Impact of Brexit on Unitary Patent Protection and its Court”, 2018, available here:

^[14] A. Finch, “Reply to the studies on “The Impact of Brexit on Unitary Patent Protection and its Court” by Hans Ullrich and Matthias Lamping”, 2018, available here:

[15] http://patentblog.kluweriplaw.com/2019/06/03/preparatory-committee-unified-patent-court-starts-new-round-of-recruitment-of-judges/