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ISSUE 1 2014 MASCHIO & SOAMES IP LTD
What changes will be made to the UK Patents Act 1977?
Changes to the Patents Act 1977 will be needed to confer jurisdiction on the new UPC with respect to those actions for which the UPC will have competence, i.e. infringement and validity of European bundle and Unitary Patents. Changes to the Patents Act will also be needed to ensure that the infringement provisions for European bundle patents and Unitary Patents that are set out in the UPC Agreement are applied in UK law. Draft legislation has been proposed by the UK Government and is presently in the consultation period.
The Transitional Period and Opt-out
During a transitional period of at least seven years (which may be extended by a further seven years), infringement and validity actions on European bundle patents may still be brought before national courts or other national competent authorities, e.g. the IPO in the UK.
Additionally, an owner of a European bundle patent will be able to opt out of the jurisdiction of the UPC on a patent by patent basis. In this case, the European bundle patent will remain in the jurisdiction of national courts. For example, if the owner of a European bundle patent valid in the UK chooses to opt out that patent, any litigation will be in the UK courts. Once a patent has been opted out of the UPC’s jurisdiction it can be opted back in at any time before the end of the transitional period, providing no action has already been brought before a national court. These transitional arrangements do not apply for the new Unitary Patent, for which cases will always be heard by the UPC.
Participating Countries...not so simple.
One would expect all of the major territories in Europe to be participating. Unfortunately, this is not to be the case, for the moment at least. Politics has got in the way of effecting what is conceptually a simple system. Italy and Spain will not ratify. The result? A Unitary Patent which will not cover all European states! To date Austria, Belgium, Denmark, France and Sweden have ratified. The UK and Germany are expected to early in 2015. A total of 13 states need to ratify before the legislation can come into force.
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