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The UPC is not relevant in the UK anymore, right? Wrong.
Following the UK’s withdrawal from the European Union there has been a subsequent UK withdrawal from the UPC. On 20 July 2020 the UK deposited a notification of the withdrawal of its ratification of the UPC Agreement meaning that the UPC will not have jurisdiction over the UK when it starts operating at some point in the next 12 months. However, that should not be understood to mean that the UK’s influence on, and involvement in, the UPC will no longer be very significant.
UK Influence in the UPC System
In the preparation of the UPC and prior to Brexit, the UK took a leading role in the set-up of the UPC. There were many aspects to this, but it included the core aspects of London hosting one of the three central division courts; UK Judges playing a role in the selection of and training of UPC Judges; and UK practitioners drafting the Rules of Procedure and, importantly, those Roles of Procedure being predominantly taken from the UK patents court rule of procedure. Although the UPC Rules of Procedure amalgamates aspects of the litigation procedure from around Europe, they contain a number of core elements that are standard in UK patent litigation but which are not currently in place in other jurisdictions around Europe. For example, the Rules include the ability to cross-examine witnesses and experts; they contain a more comprehensive costs recovery regime than is commonly implemented across Europe; and there will be the ability for the UPC to order disclosure of documents by the parties.
UK Patent Attorneys Qualified to Represent
Under Article 48(2) of the UPC Agreement (“UPCA”) all European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office (EPO) and who have appropriate qualifications such as a European Patent Litigation Certificate may represent parties at the UPC. This provision covers all UK European Patent Attorneys who have the necessary litigation qualification. It will also cover European Patent Attorneys from other countries who have not signed up to the UPCA, such as Spain (which is part of the EU) and Turkey (which is not part of the EU).
Influential UK Patent Litigation set to Continue
With the UK no longer a part of the UPC and the UPC no longer having jurisdiction over the UK, there will continue to be a need for UK patent litigation. The need for UK patent litigation will continue in relation to UK national patents (whether they are EP(UK) patents or GB patents) and the influential nature of UK patents court judgments will continue. There is expected to continue to be a large volume of national patent litigation across Europe, including within the UPC territory, due to many patents being opted out of the UPC jurisdiction. Therefore, the UK will play the same prominent role that it has played in cross-border European patent disputes for decades. However, for those patents that remain within the UPC jurisdiction, to the extent there is an issue of infringement or validity in the UK, a parallel national case will be required in the UK. The utility of such a parallel case is not limited to the need for UK relief but it is likely that, since many aspects of the UPC rules are “imported” UK patent litigation rules, there may be some attention paid by the UPC to how the UK courts apply those rules, both generally but, perhaps in particular, within the same parallel ongoing case.
At AA Thornton we are firm believers in the benefits that come with employing a combined team of attorneys and litigators on a patent case. We have seen these benefits on many occasions and deliver support seamlessly with our pre-existing combined team. The benefits of this approach are likely to grow in light of the UPC. Not only will there be benefits in the conduct of UK patent litigation, but with a team of UK solicitors and barristers and patent attorneys, clients can now benefit from the same team running the parallel UPC case as well as any EPO Opposition.
 Under rule 12 of the current draft decision of the Administrative Committee in relation to the ‘Rules on the European Patent Litigation Certificate and other appropriate qualifications pursuant to Article 48(2) of the UPCA’ during the initial year after entry into force, European patent Attorneys who have completed the Queen Mary University of London ‘Certificate in intellectual Property Law’ or ‘MSc Management of Intellectual Property’ courses, or an equivalent course at Nottingham Law School or IPReg course, will be deemed to have the appropriate qualifications.
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