A draft Statutory Instrument (SI), The Patents (Amendment)(EU Exit) Regulations 2018, has been laid before the UK Parliament. As the Explanatory Memorandum explains, the SI amends legislation relating to the UK patent system so the law (including “retained” EU law) continues to work effectively after Brexit. That law includes the EU Regulations concerning supplementary protection certificates (SPCs) (which are national rights): Regulation 469/2009 for medicinal products and Regulation 1610/96 for plant protection products. The amendments reflect that marketing authorisations granted according to Directives 2001/83/EC or 2001/82/EC (defined in the SI as “EEA authorisations”) will no longer include those for the UK, and therefore provide that, to be the subject of an SPC in the UK, a product must have a UK marketing authorisation. That product must also be protected by a patent (a “basic patent”), and amendments to the Regulations’ provisions on proceedings for a declaration of invalidity of an SPC reflect the proposed unitary patent and Unified Patent Court (UPC) system, the UPC having jurisdiction in certain cases.
The amendments have some potential ambiguity, however. They provide that an action for a declaration of invalidity of an SPC may be submitted to “the comptroller or the court”, with the “court” being the UPC, if the basic patent is subject to the UPC’s jurisdiction by Schedule A4 to the Patents Act 1977. Under Schedule A4, the UPC has exclusive jurisdiction for invalidity actions of an SPC based either on a unitary patent or (subject to transitional and opt-out provisions in Article 83 of the UPC Agreement) a European Patent (UK). Therefore, “the court” referred to in the context of “the comptroller or the court” in the draft SI, when interpreted in the light of the Patents Act 1977, will, for those SPCs, be the UPC. Further, as stated in Schedule A4 (and also in the explanatory note to the SI introducing that ScheduleA4 into the Patents Act 1977), the UPC should have exclusive jurisdiction in such cases (i.e. SPCs based on unitary patents or non-opted out “classical” EPs). So far, so good: this would make entire sense so that the SPC litigation regime would mirror the regime for the patents upon which those SPCs were based. Hence not only would (in particular) unitary patents be litigated exclusively in the UPC, but so too would any SPCs based upon them.
However, what is the impact of the reference to “the comptroller” in the expression “the comptroller or the court”? Does this leave this national UK authority (the UK IPO) with jurisdiction as well as the UPC? The natural meaning of the Statutory Instrument (these words cannot simply be ignored) suggests that there remains additional jurisdiction in the hands of the Comptroller as well as the Court (the UPC) even if this was not intended. In consequence, it may remain possible for SPCs based on unitary patents to be invalidated in the UK IPO.
The potential ambiguity is, of course, only relevant if there is a “no deal” Brexit, and the UK is part of the UPC system nonetheless, but given the importance of SPCs, it is a point which is of potential importance because, after Brexit, the Comptroller will not be bound (or indeed able) to make a reference to the CJEU, whereas the UPC will. Hence in certain cases, a much speedier revocation of an SPC may be possible via the UK IPO by avoiding any possibility of a CJEU reference. Hence this is yet another jurisdictional issue to add to the list of complications surrounding the UPC system.