An association of German research institutes concluded in a paper published this week that the UK remaining in the UPC system after Brexit would be incompatible with EU law.
The 182-page document was written by Matthias Lamping and Hanns Ullrich of the Max Planck Institute for Innovation & Competition Research, which carried out research on needed updates to the SPC regulation for the EU, and was posted on September 10 2018.
The paper sets out that the extension of unitary patent protection to the UK post Brexit through an international convention would create a “fictitious unity that is in reality legally split, practically and politically untenable, and incompatible with EU law”.
The document lays out a blow-by-blow argument for this incompatibility, including that continued UPC membership would enable the UK to directly influence EU law development in unitary patent protection and related fields of intellectual property.
It also argues that the UK’s veto right under the UPCA would be particularly problematic when it comes to directives.
According to Article 87 (2) of the UPCA, the “administrative committee may amend [the UPCA] to bring it into line with union law”. It adopts its decisions by a majority of three quarters of the contracting member states.
According to Article 87(3) of the UPCA, however, a decision of the administrative committee cannot take effect if a contracting member state declares that “it does not wish to be bound” by it.
It adds that in this case, a review conference would have to be convened, which means that all contracting states, including non-EU states, would have a say over the UPCA’s envisaged revision.
The release of this paper will be a blow to the UK government, which last July expressed a commitment to try and find ways to stay in the UPC in its Chequers agreement white paper.
Speaking about the publication on a panel at today’s European Patent Forum in Munich, Francesco Macchetta, director of IP at Bracco, reminded delegates that there are no legal barriers to prevent the UK staying in the UPC system after Brexit.
“Remaining in the UPC is possible for the UK,” he said. “We will look at the Max Planck paper in more detail, but legally the UPC is an international treaty and not EU-law. It has connections, of course, as many other laws do but it is not automatic that leaving the EU would mean you leave an international treaty.
“Unitary patent protection is EU law, but there are ways around that.”
Marianne Schaffner, partner at Dentons and panel moderators, disagreed, and added that you cannot have one leg in the EU and one out.
The UK and EU governments have not yet issued a response to the research.
