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International patent prosecution and practice seminar in Chicago

On September 14 to 15, 2017 we will present our Seminar in cooperation with WIPO at John Marshall Law School. More details will follow soon.

German Constitutional Court reviews the implementing legislation for the unitary patent package

As recently made public by news media, the German Constitutional Court asked the German Federal President already on April 3, 2017, at first orally, then in writing, not to sign (off on) the implementing legislation for the Unitary Patent Package, due to a constitutional complaint by a private person.

The reason for this is that the German Constitutional Court needs more time to consider the constitutional complaint which suggests that it is not without any merit from the outset, as is the case with the majority of constitutional complaints by private persons. Due to this request of the German Constitutional Court, the German implementing legislation for the Unified Patent Court (UPC) and Unitary Patent (UP), which should have been put into force this year, will be on hold.

This unexpected delay of the German ratification process as well as the unexpected outcome of the UK snap elections of June 8, 2017 render the further developments concerning the UP & UPC project questionable.

In fact, this move of the German Constitutional Court opens up a new scenario which, at best, further delays the operational start of the UPC system but also heats up speculations that the UP & UPC project may eventually fail, due to constitutional issues of Germany.

We will keep you updated on any further developments.

Start of UPC further delayed

On June 7, 2017, the Preparatory Committee of the Unified Patent Court (UPC) published a statement announcing that the timetable for the start of the UPC Agreement provisional application period and target date for entry into operation of the UPC, previously envisaged for 1 December 2017, will have to be postponed.

The reason for this further delay of the envisaged start of the UPC is that some Member States have not yet agreed to be bound by the UPC Agreement's Protocol on Provisional Application. (The Protocol on Provisional Application allows various parts of the Agreement to come into force early and the 'provisional application phase' to start, during which final preparations for the start of the UPC system, such as recruitment of judges, can be completed.)

Following last week's meeting of the EU Competitiveness Council, Commissioner Bieńkowska stated that three more Member States are required to complete steps to allow for the provisional application period to commence. The Protocol will come into force the day after 13 states (including France, Germany and the UK) have either ratified or informed the 'depositary' that they have parliamentary approval to ratify the UPC Agreement; and have consented to be bound by the Protocol. Eight Member States already meet this requirement (Belgium, Denmark, France, Finland, Italy, Luxembourg, the Netherlands, and Sweden); and both Germany and the UK have each consented to the Protocol. Austria, Bulgaria, Malta and Portugal have each ratified the UPC Agreement but have not yet consented to the Protocol.
Though the Prep Committee did not provide a new target date at this stage, it will publish a new timetable as soon as possible.
We will keep you posted on this.

Possible delay of the UP & UPC project due to snap elections in uk

On April 18, 2017, British Prime Minister Theresa May announced a snap general election for June 8, 2017 (instead of regular elections in May 2020).

On May 3, 2017, Prime Minister May informed the Queen about the dissolution of the Parliament which is the first step onwards to snap elections.

What does this mean for the upcoming UP&UPC?

This announcement will affect the current timetable for the Provisional Application Phase (PAP), previously expected to begin in the middle of May 2017 as the UK already signed the protocol to implement the PAP. Below, we would like to point to possible developments with regard to the UP&UPC project resulting from the snap elections in UK on June 8, 2017, as collected from news reports and information by British colleagues:

With the announcement of the election, a political convention in the UK called "Purdah" came into effect. This pre-election period, specifically the time between an announced election and the final election results, affects civil servants by particularly preventing central and local governments from making announcements about any government initiatives (such as legislative changes) which could be seen to influence the election or favor a party or candidate in the forthcoming election.

As a result, the statutory instrument (brief: SI) for the UPC Protocol on the Privileges and Immunities (PP&I) was not laid before Parliament and will now not be laid until the election is over and the new Parliament begins to work. The next steps after the laying out are a debate and an affirmative resolution in both Houses of Parliament after 42 days. Further, a similar Statutory Instrument (SI) will be laid before the Scottish Assembly, again with an affirmative vote after 54 days. Thereafter, either Prime Minister Theresa May or Foreign Minister Boris Johnson have to formally sign the instrument of ratification to come into effect.

Therefore, there will be no process with regard to the UP&UPC project until the snap election took place on June 8, 2017, and particularly the constitution of the new Parliament is finished. It may hence be around the end of June 2017 or even later before said SI for the UPC PP&I can be laid before the new Parliament, thereby triggering the 42 days and afterwards the 54 days with a similar SI before the Scottish Assembly.

For this reason, at the moment nobody in the UK government will give an estimate of when ratification will take place. Additionally, the regular summer recess in UK takes place around July 20 to September 5, 2017 so that ratification does not seem probable before the middle of October 2017.

This would mean that the Sunrise Period (previously estimated to start in September 2017) and the Unified Patent Court starting date (December 2017) will be delayed. However, as long as there is no updated statement on the position of UK, the Preparatory Committee does not update any estimates in this respect.

Summarizing the above, although there seems to be no change in policy with the UK government, i.e. they will ratify, a further delay of at least one month up to several months until early 2018 will have to be expected until the UPC will start its operation.