Can the UK participate in the Unitary Patent System after a Brexit?
Legally, this may be possible – although the legal position is far from straightforward and widely debated.
The Unitary Patent System is based on: (i) the UPC Agreement, which established the jurisdiction of the UPC; and (ii) EU Regulations relating to the creation of the Unitary Patent and the applicable language regime.
The UPC Agreement is an international treaty and not an instrument of EU law. However, ratification of the UPC Agreement is only open to EU Member States (Art 84 UPC Agreement). Technically, this may not be an issue given that the UK has now ratified that Agreement while still an EU Member State. However, it is important to note that this limitation was introduced following an opinion of the CJEU (Opinion 1/09) in which it found the then-current proposal (whether the parties to it were a mixture or Member States and non-Member States) to be incompatible with EU law, and following which all non-Member States were removed as parties. 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.
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.
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. The full text of that opinion is available here. Counsel’s view is consistent with our own (as set out above).