Pan-european patent law change challenged by a German spanner

And it was all going so well, writes David Moreland

Companies that trade across Europe file patents to protect their IP through the European Patent Office (EPO).

In 2016 alone 7,226 filings were made, including 247 from Scotland.

Will our relationship with the EPO change when we’re no longer part of the EU? Contrary to misconceptions, the EPO is not an EU institution. It has EU members amongst its signatory countries, but there are non-members too – Switzerland, for example.

Companies which have patents granted by the EPO then need to have those patents validated in each country in which they want protection.

Some do this across a small number of jurisdictions, while others – pharmaceutical companies being a prime example – want to validate in every European country. This entails hav- ing the patent translated into the local language – my firm has a team in Luxembourg which deals with a huge amount of validation work.

Such is the demand that we have over 40 people, spanning at least 15 nationalities and even more languages, at the ready to handle this work.

As the EPO is not answerable to the EU justice system, you’d be forgiven for thinking Brexit might not have an impact on the status quo. However, it’s not that straightforward because, ahead of the referendum, many European countries were already exploring reforms to improve and streamline the validation process.

This would be done through the introduction of the Unitary Patent, enforced by a Unified Patent Court. In short, it would be a way of getting rid of a lot of red tape and expense, by

enabling companies to get one single patent valid across Europe instead of multiple patents across different jurisdictions. These proposals have been on the table for years and, in order to go ahead, would need to be ratified by the member states with the highest number of patent validations, including the UK and Germany.

Pre-brexit, things were looking positive, but the looming referendum caused trepidation because EU membership is a requirement for entering the Unitary Patent scheme.

However, while there are rules about being an EU member, there are no rules about leaving the UP scheme if you exit the EU. So, essentially it could still go ahead provided the UK agreed to be a part of it before this happens. Around 3-4 months after the referendum, the UK Government said it did want to be a part of it. The Unified Patent scheme was getting a head of steam.

But now there is a new spanner in the works. An anonymous party has recently filed a case with the German Constitutional Court which essentially suggests ratifying the agreement would be against the German constitution. The German Constitutional Court has determined that on the face of it, the challenge is not entirely without merit, and asked the German President to delay signing the implementing legislation for the Unified Patent Court and Unitary Patent court. This ensures that ratification does not take place before a full determination of the constitutionality of the legislation has been made. Whether the complaint is upheld remains to be seen; however any attempt to block the legislation will, at the very least, delay it.

We can only watch this space to see what comes of the German legal challenge.

Even if the new reforms don’t come in, or if the UK is not a part of them, the EPO system we have known for some 30 or 40 years will remain. If the UK was to end up outside of the Unitary Patent regime, Marks & Clerk LLP would still be able to apply for Unitary Patents for its clients via its offices in Europe. David Moreland is a Chartered (UK) and European Patent Attorney for Marks & Clerk