Can the UK participate in the Unitary Patent System after a Brexit?
Legally, this could be possible, but the steps required to achieve it may be politically difficult in the UK.
The Unitary Patent System is based on the UPC Agreement, which established the jurisdiction of the UPC, and EU Regulations relating to the creation of the Unitary Patent and the applicable language regime.
The UPC Agreement is an international treaty and is not an instrument of EU law. However, under the current legislative framework, ratification of the UPC Agreement is only open to EU Member States (Art 84 UPC Agreement). This limitation was introduced following an early opinion of the CJEU (Opinion 1/09), in which it found the then-current proposal to be incompatible with EU law.
However, there is a strong argument that the CJEU’s decision did not prohibit the participation of non-EU Member States altogether, but requires only that all participants recognise the primacy of EU law, and that the Art 267 TFEU process (under which questions of EU law can be referred to the CJEU) is maintained.
So, one potential legal basis for the UK’s continued participation in the UPC in a manner which is compatible with EU law, is an amended UPC Agreement, revised to remove the EU membership requirement, under which, among other things, the UK accepts Art 267 TFEU and the primacy of EU law under Art 20-24 UPC Agreement.
This could, however, prove to be politically difficult. The UK's Prime Minister, Theresa May, has already said (in a speech on 17 January 2017) that bringing an end to the jurisdiction of the CJEU in the UK is among her top twelve priorities. The Government’s subsequent Brexit White Paper, titled “The United Kingdom’s exit from and new partnership with the European Union”, confirmed this approach by stating “We will bring an end to the jurisdiction of the CJEU in the UK”.
Regarding the Unitary Patent Regulation, while it will no longer apply to the UK post-Brexit (as it is an instrument of EU law), Participating EU Member States that are also EPC contracting states could agree, based on Art 142 EPC (under which any group of EPC Contracting States can agree that an EP granted for those States has unitary character throughout their territories) that the unitary effect of a Unitary Patent would be extended to the UK on the same basis. International agreements could also replicate the arrangements in the Regulation relating to the System’s language regime.
So, in our view, while the legal position is far from straightforward and widely debated, if there is political will, in both the UK and continental Europe, it appears very likely that a legal solution will be found.
Through its participation in the UK’s Intellectual Property Lawyers' Association, Linklaters (along with the IP Federation and the Chartered Institute of Patent Attorneys), instructed leading counsel Richard Gordon Q.C. and Tom Pascoe, both of Brick Court Chambers, to consider whether the UK can participate in the Unitary Patent and UPC after a Brexit. Counsel’s view is consistent with our own (as set out above). In particular, the CJEU’s Opinion 1/09 does not necessarily rule out the UK’s continued participation. The full text of the opinion is available here.
More uncertain is whether the political will continues to exist. The remaining EU Member States may not agree to the UK’s continued participation in the Unitary Patent System post-Brexit if this could be seen as allowing the UK to “cherry pick” its involvement in EU initiatives following its exit. Moreover, the Unitary Patent System is unlikely to be high on the UK’s agenda in its Brexit negotiations. It has been indicated several times, most recently on 29 November 2017 by Jo Johnson, the UK’s IP minister, that the UK’s “future relationship with the UPC will be a matter for negotiation”.
So, while it is likely to be legally possible for the UK to participate, this may not be achievable politically.