by Gualtiero Dragotti
The long story of the EU patent, commenced in 1975 (!) with the aborted Community Patent Treaty, which ultimately led to the Unitary Patent (established by Regulation (EU) No 1257/2012) and to the Unified Patent Court Agreement, done at Brussels on February 19, 2013 but not yet entered into force, will eventually come to a conclusion in 2019.
This very year will indeed clarify if and how Brexit will take place and affect the UP/UPC package and its entry into force, as well as the possible role of the UK in said system.
In parallel, the German constitutional court is expected to decide on the claim brought against the system and its compatibility with the German and EU laws; such a decision could easily mean a final “yes” or “no” to the system, the “no-side” including also the possibility that the case is referred to the EU Court of Justice.
The third issue to be dealt with in 2019 is the possible relocation of the London seat of the UPC central division to Milan, according to a very strong request ultimately brought forward by the Italian government, supported by Milan’s City Council and Lombardy County.
All these events are strictly intertwined and could result in at least three scenarios.
Scenario 1: Bye-bye UP/UPC
Both a no-deal Brexit and a hard Brexit could make it very difficult for the UK to remain in the UPC system. Such an outcome will make the system less advantageous for the users and make them less interested in pushing for its actual entry in force.
The German constitutional court could push in the same direction either by accepting the petition brought against the UPC agreement or by referring the case to the EU Court of Justice, a decision which could result in a delay of years and easily amount to the death of the system as we presently know it and need it.
Scenario 2: Full speed ahead!
Assuming that the Brexit hurdle does not significantly affect the possibility, for the UK, to participate to the UPC system and that the German constitutional court dismisses or rejects the claim, the 6-months sunrise period provided by the UPC Agreement could start even before summer, so that the court could be actually open for business before the end of the year.
In this scenario the patent owner should dust off the opt-out policies and decisions devised some years ago, when the system seemed ready to start, and update them in order to reflect the changes in their patent and product portfolios.
Law firms and patent attorneys shall also refresh the resources dedicated to operate in the new system; at DLA Piper we are already framing our patent-related advice in order to reflect the possibility that UPC actually starts within the end of the year; our cross-border team is ready to assist and represent clients before the new court.
Scenario 3: Welcome to Milan
Assuming that the Unified Patent Court starts to operate and that UK manages to ratify the agreement, many commentators pointed out that the UPC system keeps a strong link with the European Union and with the EU Court of Justice.
Such a system cannot easily afford to have one of the three seats of the central division located in London, outside the boundaries of the European Union.
Hence the request to move the seat back into a Member State; as noted by multiple parties, the natural and best choice will be to bring the court to Italy, the Member State where most European patents were in force in 2012 after Germany and France (not considering UK, no longer part of the EU). This criterion reflects the one set forth in the Agreement in order to identify the Member States whose ratification is necessary for the UPC to enter into force.
Choosing Italy for the seat of the Central Division would mean choosing Milan, as clarified and requested by the Italian government, the President of Lombardy County and the Mayor of Milan, supported by the Milan bar and by all the main IP stakeholders.
Assuming that this strong request actually contributes to bringing all the seats of the Central Division of the Unified Patent Court back into the territory of the European Union, namely to Paris, Munich and Milan, we could easily tag 2019 as the year in which EU patent litigation is going to be reshaped, making Milan one of the hubs of the IP arena.
Needless to say, we are right in the center of this change, ready to assist our clients and make them succeed also in this brave new world.