29 January 2016

Proposed changes to UK patent law to comply with UPC regime

Following its initial Technical Review and Call for Evidence back in 2014, the UK Government has published its response highlighting the necessary changes that need to be made to UK patent law in order for the UPC Agreement to be ratified and as result of the Unitary Patent Regulation. The changes are reflected in the draft Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 which will only take effect when the UPC Agreement comes into force. There is no news, however, as to when UK ratification of the UPC Agreement may take place.

Key issues

  • Jurisdiction of the UPC: The Government has noted the concerns expressed by respondents about the wording of the provisions relating to the division of competence between the UPC and the UK courts during the transitional period of the UPC, including in relation to SPCs.
  • Powers of the Comptroller of Patents: The position remains that the Comptroller will have no powers to make decisions in disputes involving a Unitary Patent. However, the Comptroller will be able to provide a non-binding opinion service for Unitary Patents, albeit its power to revoke a patent on the basis of an opinion finding a lack of novelty or inventive step will not apply to Unitary Patents or European patents that have not been opted out of the UPC.
  • No double patenting: The Government had proposed that it would not be possible to have a Unitary Patent and a national patent for the same invention; the responses on this issue were evenly divided. The arguments in favour of double patenting included that it could provide a safety net if, for example, a Unitary Patent was revoked for some procedural reason, and the fact that other Member States may choose to allow it. However, the Government has affirmed its view that double patenting should not be permitted (reflecting the existing position in relation to European patents and national patents).

  • Groundless threats: The UK groundless threats regime will be extended to include Unitary Patents. The Government has separately published its response on the draft Bill proposed by the Law Commission to reform groundless threats. The draft Bill provides that the necessary link with the UK will be met if the threat relate to acts done, or which would be done, in the UK.

  • SPCs: The Government notes that the European Commission is currently scoping out whether there is an imperative for revisions to the European SPC regime, in the form of a new EU SPC, with a broader or altered scope. This project is at an early stage and, accordingly, the UK legislation will provide for national SPCs based on Unitary Patents.  

  • New exceptions to infringement: The Government proposes to amend the Patents Act to introduce two new exceptions to infringement (these are contained in Articles 25-27 of the UPC Agreement but do not currently exist in UK law):

    • Plant breeding exception: a new exception will allow for the use of patented biological material in the development of new varieties.  

    • Computer programs: more controversially, the Government will also introduce an exception relating to software decompilation and interoperability. It considers that the exception will likely be given a narrow interpretation and that it merely intends to ensure that the existence of a patent does not interfere with the lawful use of a computer program under copyright law.  

      However, given the untested nature of this exception (it has no history in the patent law of any Member State), it has settled on a two stage implementation process: initially it will apply to Unitary Patents and bundle European patents (whether they are opted out of the UPC or not), with the possibility of later extending the exception to domestic GB patents.   

  • Transitional arrangements – the law on infringement that applies in a particular case will be the law in force at the time the infringing act took place.

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