Citation, commencement and extent

1.—(1) This Order may be cited as the Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016.

(2) This Order comes into force on the date of entry into force of the Agreement on a Unified Patent Court signed at Brussels on 19th February 2013(5).

(3) This Order has the same extent as the Patents Act 1977, except that it does not extend to the Isle of Man.

Amendments to the Patents Act 1977

2.—(1) The Patents Act 1977 is amended as follows.

(2) In section 58 (references of disputes as to Crown use), in subsection (6)(6), after “Act,” insert “or, in the case of a European patent (UK), has been allowed under any of the provisions in the Agreement on a Unified Patent Court,”.

(3) In section 60 (meaning of infringement) in subsection (5)(7), after paragraph (i) insert—

“(j)it consists of a use referred to in Article 27(c) of the Agreement on a Unified Patent Court;

(k)subject to subsection (6H), it consists of an act or use referred to in Article 27(k) of the Agreement on a Unified Patent Court.”.

(4) In section 60 (meaning of infringement) after subsection (6G)(8), insert—

“(6H) Subsection 5(k) applies to an act or use in relation to a European patent (UK) or a European patent with unitary effect, but does not apply to an act or use in relation to a patent granted by the comptroller.”.

(5) In section 77 (effect of European patent (UK))(9)—

(a)in subsections (4), (4A) and (5A), after “European Patent Convention” insert “or the Agreement on a Unified Patent Court”;

(b)in subsection (5)(a)—

(i)after “European Patent Convention” insert “or the Agreement on a Unified Patent Court”; and

(ii)at the end after “Enlarged Board of Appeal” insert “or is revoked and subsequently restored by the Unified Patent Court”;

(c)after subsection (9), insert—

“(10) Subsection (1) does not apply and is to be treated as never having applied in respect of a European patent (UK) whose unitary effect is registered by the European Patent Office in the Register for unitary patent protection (see, in particular, the Unitary Patent Regulation).”.

(6) After section 83, insert—

“83A    European patent with unitary effect and Unified Patent Court

(1) Schedule A3 contains provision about the application of this Act in relation to the European patent with unitary effect.

(2) Schedule A4 contains provision about the jurisdiction of the Unified Patent Court in relation to the European patent (UK) and the European patent with unitary effect.”

(7) In section 91 (evidence of conventions and instruments under conventions)(10)—

(a)in subsection (1)(a), after “the Community Patent Convention” insert “, the Agreement on a Unified Patent Court”;

(b)in subsection (6), in the definition of “relevant convention court”, after “party to the relevant convention”, insert “but does include the Unified Patent Court;”.

(8) In section 92 (obtaining evidence for proceedings under the European Patent Convention)(11), in subsections (1) and (5), after “European Patent Convention” insert “or proceedings before the Unified Patent Court”.

(9) In section 130 (interpretation)(12)—

(a)in subsection (1), insert the following definitions at the appropriate places—

““Agreement on a Unified Patent Court” means the Agreement on a Unified Patent Court signed at Brussels on 19th February 2013;

“European patent with unitary effect” has the same meaning as in Article 2 of the Unitary Patent Regulation;

“Unified Patent Court” means the court established under the Agreement on a Unified Patent Court;

“Unitary Patent Regulation” means Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection(13).”.

(b)in subsection (1), in the definition of “court”, after paragraph (c) insert—

“or the Unified Patent Court, as respects the jurisdiction which it has by virtue of Schedule A4;”;

(c)in subsection (6), after paragraph (c), insert—

“(d)The Agreement on a Unified Patent Court;”.

(10) After Schedule A2, insert—

“SCHEDULE A3EUROPEAN PATENT WITH UNITARY EFFECT

Meaning of “relevant statutory provisions”

1.  In this Schedule “relevant statutory provisions” means—

(a)the provisions of this Act which, by virtue of paragraph 2, apply in relation to the European patent with unitary effect, and

(b)the other provisions of this Act which, by virtue of the Unitary Patent Regulation, are to be treated as applying in relation to the European patent with unitary effect (see, in particular, Article 7 of that Regulation).

Provisions applied by this Schedule to the European patent with unitary effect

2.  The following provisions of this Act apply in relation to a European patent with unitary effect, subject to paragraphs 3 and 4—

section 48 (compulsory licences: general);

section 48A (compulsory licences: WTO proprietors);

section 48B (compulsory licences: other cases);

section 49 (provisions about licences under section 48);

section 50 (exercise of powers on applications under section 48);

section 50A (powers exercisable following merger and market investigations);

section 51 (powers exercisable in consequence of report of Competition and Markets Authority);

section 52 (opposition, appeal and arbitration);

section 53 (compulsory licences; supplementary provisions);

section 54 (special provisions where patented invention is being worked abroad);

section 55 (use of patented inventions for services of the Crown);

section 56 (interpretation, etc., of provisions about Crown use);

section 57 (rights of third parties in respect of Crown use);

section 57A (compensation for loss of profit);

section 58(1) to (6) and (9A) to (13) (references of disputes as to Crown use);

section 59 (special provisions as to Crown use during emergency);

section 60 (meaning of infringement);

section 64 (right to continue use begun before priority date);

section 73(2) to (4) (Comptroller’s power to revoke patents on his own initiative);

section 74A (opinions on matters prescribed in the rules);

section 74B (reviews of opinions under section 74A);

section 76A (biotechnological inventions);

section 77(4) to (5A) (effect of European patent (UK));

section 80(1) (authentic text of European patents and patent applications);

sections 97 to 100 (legal proceedings) so far as they relate to proceedings which do not fall within the exclusive jurisdiction of the Unified Patent Court as set out in paragraph 1 of Schedule A4;

section 101 (exercise of comptroller’s discretionary powers);

section 102 (right of audience, &c in proceedings before comptroller);

sections 103 (extension of privilege for communications with solicitors relating to patent proceedings) and 105 (extension of privilege in Scotland for communications relating to patent proceedings) so far as they relate to proceedings before the comptroller;

section 107 (costs and expenses in proceedings before the comptroller);

section 108 (licences granted by order of comptroller);

section 110 (unauthorised claim of patent rights);

section 116 (immunity of department as regards official acts);

section 118 (information about patent applications and patents, and inspection of documents);

section 123 (rules);

section 124 (rules, regulations and orders; supplementary);

section 125 (extent of invention);

section 128A (EU compulsory licences);

section 128B (supplementary protection certificates).

Manner of application of relevant statutory provisions

3.  The relevant statutory provisions apply in relation to a European patent with unitary effect in the same way as they apply in relation to a European patent (UK).

Modifications of relevant statutory provisions

4.—(1) In their application in relation to the European patent with unitary effect, the relevant statutory provisions which are referred to in this paragraph have effect subject to the modifications set out in this paragraph.

(2) In section 7(2)(b), the reference to the United Kingdom is a reference to any of the Participating Member States.

(3) In sections 30(7) and 31(7), references to proceedings by virtue of section 61 or 69 are references to equivalent proceedings in the Unified Patent Court.

(4) In sections 33(1)(a), 33(4), 37(2), 37(7), 38(2) and 38(3), the reference to registration is a reference to registration in the Register for unitary patent protection.

(5) In sections 48(1)(b), 48B(4), 50A(4), 51(3), 53(3), and 53(4), the reference to the register is a reference to the Register for unitary patent protection.

(6) In sections 48(2)(b), 50A(4), 51(3), 53(3), 53(4) and 53(5), the reference to making an entry is a reference to directing the making of an entry.

(7) In sections 48B(2)(b) and 50(2)(a), the reference to the journal is a reference to the European Patent Bulletin.

(8) In section 55(5)(b), the reference to the Patent Office is a reference to the European Patent Office.

(9) In section 59(2), the reference to section 69 includes a reference to Article 67 of the European Patent Convention.

(10) In section 60—

(a)in subsections (1), (2), and (5)(d), (e) and (f), the references to the United Kingdom are references to the territory of a Contracting Member State in which the European patent with unitary effect has effect;

(b)in subsection (7)—

(i)in the definition of “relevant ship” and “relevant aircraft, hovercraft or vehicle”, the reference to the United Kingdom is a reference to a Contracting Member State in which the European patent with unitary effect has effect; and

(ii)in the definition of “exempted aircraft”, the reference to an aircraft to which section 89 of the Civil Aviation Act 1982(14) applies is a reference to an aircraft other than an aircraft of a Contracting Member State in which the European patent with unitary effect has effect.

Interpretation

5.  In this Schedule—

(a)“Contracting Member State” has the same meaning as in Article 2(c) of the Agreement on a Unified Patent Court; and

(b)the following expressions have the same meanings as in Article 2 of the Unitary Patent Regulation—

Participating Member State;

Register for unitary patent protection.

SCHEDULE A4THE UNIFIED PATENT COURT

Jurisdiction

1.  The Unified Patent Court has exclusive jurisdiction in respect of an Article 32(1) action which relates to—

(a)a European patent with unitary effect, or

(b)a supplementary protection certificate(15) for which the basic patent is a European patent with unitary effect,

(c)subject to paragraph 2—

(i)a European patent (UK), or

(ii)a supplementary protection certificate for which the basic patent is a European patent (UK).

Transitional provisions

2.—(1) The transitional provisions in Article 83 apply in relation to an action referred to in Article 83(1).

(2) An opt out referred to in Article 83(3) may be exercised in accordance with that provision and any relevant Rules of Procedure.

(3) Such opt out may be withdrawn in accordance with Article 83(4) and any relevant Rules of Procedure.

(4) For the purposes of this paragraph, a reference to Article 83 is a reference to Article 83 of the Agreement on a Unified Patent Court.

Modifications of law applicable where UPC has jurisdiction

3.—(1) In the case of an Article 32(1) action relating to—

(a)a European patent with unitary effect, or

(b)a European patent (UK),

the provisions of this Act listed in sub-paragraph (2) do not apply in relation to the action where the Unified Patent Court has jurisdiction in accordance with paragraph 1.

(2) The provisions referred to in sub-paragraph (1) are—

section 58(7) to (9) (references of disputes as to Crown use);

section 61 (proceedings for infringement of patent);

section 62 (restrictions on recovery of damages for infringement);

section 63 (relief for infringement of partially valid patent);

section 65 (certificate of contested validity of patent);

section 66 (proceedings for infringement by a co-owner);

section 67 (proceedings for infringement by exclusive licensee);

section 68 (effect of non-registration on infringement proceedings);

section 69 (infringement of rights conferred by publication of application);

section 71 (declaration or declarator as to non-infringement);

section 72 (power to revoke patents on application);

section 73(1) to (1C) (comptroller’s power to revoke patents on his own initiative);

section 74 (proceedings in which validity of patent may be put in issue);

section 75 (amendment of patent in infringement or revocation proceedings);

section 77(3) (effect of European patent (UK)).

(3) In the case of an Article 32(1) action relating to a supplementary protection certificate for which the basic patent is—

(a)a European patent with unitary effect, or

(b)a European patent (UK),

the provisions of this Act listed in sub-paragraph (4) do not apply in relation to the action where the Unified Patent Court has jurisdiction in accordance with paragraph 1.

(4) The provisions referred to in sub-paragraph (3) are—

section 58(7) to (9) (references of disputes as to Crown use);

section 61 (proceedings for infringement of patent);

section 62 (restrictions on recovery of damages for infringement);

section 63 (relief for infringement of partially valid patent);

section 65 (certificate of contested validity of patent);

section 66 (proceedings for infringement by a co-owner);

section 67 (proceedings for infringement by exclusive licensee);

section 68 (effect of non-registration on infringement proceedings);

section 69 (infringement of rights conferred by publication of application);

section 71 (declaration or declarator as to non-infringement);

section 74 (proceedings in which validity of patent may be put in issue);

section 75 (amendment of a patent in infringement or revocation proceedings).

Enforcement

4.—(1) For the purposes of enforcement of a decision or order of the Unified Patent Court—

(a)the decision or order has the same force and effect,

(b)proceedings for or with respect to enforcement of the decision or order may be taken, and

(c)the enforcing court, or in a relevant Northern Ireland case the Enforcement of Judgments Office, has the same powers in relation to the enforcement of the decision or order,

as if the decision or order had originally been made by the enforcing court.

(2) The enforcing court, or in a relevant Northern Ireland case the Enforcement of Judgments Office, may enforce a mediation settlement in the same manner as a judgment or order of the enforcing court.

(3) In this paragraph—

“enforcing court” means—

“mediation settlement” means a settlement reached through mediation using the facilities of the patent mediation and arbitration centre established under Article 35 of the Agreement on a Unified Patent Court;

“relevant Northern Ireland case” means a case where—

be enforced by the Enforcement of Judgments Office under the Judgments Enforcement (Northern Ireland) Order 1981(16).

Interpretation

5.  In this Schedule—

(a)“Article 32(1) action” means an action listed in Article 32(1) of the Agreement on a Unified Patent Court;

(b)“basic patent” has the same meaning as in Article 1(c) of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6th May 2009 concerning the supplementary protection certificate for medicinal products(17); and

(c)“Rules of Procedure” has the same meaning as in the Agreement on a Unified Patent Court.”

Transitional Provision

3.—(1) Any question whether an act done before commencement infringes a patent is to be determined in accordance with the law relating to infringement in force at the time the act was done.

(2) In sub-paragraph (1), “commencement” means, in accordance with article 1(2), the date upon which this Order comes into force.

EXPLANATORY NOTE

(This note is not part of the Order)

This Order makes provision to give effect to European Union legislation in relation to the European patent with unitary effect and to an international agreement on the Unified Patent Court.

The European Parliament and the Council adopted Regulation (EU) No 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (“the Unitary Patent Regulation”) (OJ No L 361, 31.12.2012, p1). The Council also adopted Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to applicable translation arrangements (OJ No L 361, 31.12.2012, p89) which does not require any changes to be made to the law of the United Kingdom. A number of member States of the European Union signed an international agreement on 19 February 2013 on a unified patent court (Cm 8653) (“the Agreement on a Unified Patent Court”).

The Order comes into force on the date of entry into force of the Agreement on the Unified Patent Court (Article 1(2)). The Order will extend only to the United Kingdom and not the Isle of Man (Article 1(3)). A separate Order will be made under section 132(2) of the Patents Act 1977 (“the Act”) in relation to the Isle of Man.

Article 2 amends the Act. Article 2(3) implements provisions on infringement in the Agreement on the Unified Patent Court. Article 2(3) inserts two new exceptions to infringement in section 60(5) of the Act. These relate to plant breeding and computer programs respectively. As regards plant breeding, the exception to infringement applies to the European patent with unitary effect, the European patent (UK) and national patents. As regards computer programs, the exception to infringement applies to the European patent with unitary effect and the European patent (UK), but does not apply to national patents. This is made clear in the amendment made by Article 2(4). In all other respects, the infringement provisions apply to the European patent with unitary effect, the European patent (UK) and to national patents.

Article 2(5)(c) amends section 77 of the Act to make clear that once unitary effect for a European patent (UK) is registered in the Register for unitary patent protection, that patent no longer has effect in the UK as a national patent and is to be treated as never having had effect as a national patent.

Article 2(6) inserts a new section 83A in the Act which inserts two new Schedules, A3 and A4, to the Act which deal respectively with the application of the Act in relation to the European patent with unitary effect, and the jurisdiction of the Unified Patent Court in relation to the European patent (UK) and the European patent with unitary effect.

Paragraph 2 of Schedule A3 applies certain provisions of the Act which relate to the European patent (UK) to the European patent with unitary effect, subject to certain modifications set out in paragraph 4.

In particular, the following provisions of the Act are applied to the European patent with unitary effect with modifications where appropriate:

• The provisions on compulsory licences (sections 48 to 54) and on use of patented inventions for the services of the Crown (sections 55 to 59)

• Section 60 (meaning of infringement) with the modifications set out in paragraph 4(10)

• The right in section 64 to continue use of an invention where such use began before the priority date

• Sections 74A and 74B on opinions by the Comptroller-General of Patents, Designs and Trade Marks as to validity or infringement

• Section 128B, which applies Schedule 4A, on supplementary protection certificates.

Article 7 of the Unitary Patent Regulation is directly applicable. By virtue of this Article, certain provisions of the Act are to be treated as applying to the European patent with unitary effect. Where these provisions require modification, this is set out in paragraph 4 of Schedule A3. Apart from providing this clarification, the Order does not purport to implement provisions of the Unitary Patent Regulation that are directly applicable.

Schedule A4 deals with the exclusive jurisdiction the Unified Patent Court has over the matters listed in Article 32(1) of the Agreement on a Unified Patent Court. These relate primarily to actions relating to infringement or validity of European patents with unitary effect or European patents (UK) or supplementary protection certificates for which the basic patent is a European patent with unitary effect or a European patent (UK). Consequently, domestic courts will no longer have jurisdiction over those matters, subject to certain transitional and opt out provisions set out in paragraph 2 of Schedule A4. Certain provisions of the Act will no longer apply as a result of the jurisdiction of the Unified Patent Court and these are set out in paragraph 3(2) and (4) of Schedule A4.

Provision is made for the enforcement of a decision or order of the Unified Patent Court in paragraph 4 of Schedule A4. Paragraph 4 also enables a mediation settlement reached through the facilities of the patent arbitration and mediation centre of the Unified Patent Court to be enforced as a judgment or order of the respective court in the United Kingdom.

Article 3 of the Order makes transitional provision. Any issue arising as to whether an act done before commencement is an infringement will be decided in accordance with the law relating to infringement at the time the act was done.

A Transposition Note and a full impact assessment of the effect that this Order has on the costs of business, the voluntary sector and the public sector is available from the Intellectual Property Office, Patents Legal Section, Concept House, Cardiff Road, Newport NP10 8QQ and is annexed to the Explanatory Memorandum which is available alongside the instrument on the Legislation UK website at www.legislation.gov.uk.