Another crucial step towards the UK’s ratification of the Unified Patent Court and Unitary Patent has been completed, which will result in a new exception to infringement of European software patents.

In January, the Government released its first draft of ground-breaking new legislation which will shape its interactions with the UPC, and the creation of Unitary Patents. The draft statutory instrument, the Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016, is also accompanied by a paper detailing the Government response to 2014 expert consultation.

On the whole, the Government have been responsive to the concerns raised by respondents to the consultation in amending the proposed legislation. Rather than rewriting existing provisions, changes have been minimal and include referring to specific provisions of the UPC agreement in amending the Patents Act 1977 to deal with UPC jurisdiction, transitional arrangements and new exemptions to infringement. Furthermore, plans for an IPO review of implementation 5 years after the creation of the UPC demonstrate Government commitment to ensuring effective integration.

Exceptions to Infringement 

The UK government signed the UPC Agreement 19 February 2013 and it currently has 25 signatories. Its ultimate purpose is to implement a single court for disputes in respect of the new unitary patent and traditional European patents with jurisdiction across participating member states.

The UPC Agreement contains exceptions to infringement which are not currently contained in UK law, in respect of plant breeding and the decompilation of software.

The decompilation exception is introduced by reference to the Software Directive (2009/24/EC), which in itself related to copyright rather than patents. The exception was intended to allow the independent creation of computer programs which can interact with other programs. In response to concerns raised by the IT sector during the consultation process in respect of the introduction of an untested new exception, the Government have stopped short of applying the exception to national patents at this stage.  Instead it will apply only to unitary patents and traditional European patents.

WAB Comment

The fact of an exception to infringement applying to European, but not national, patents raises questions of compliance with the European Patent Convention, under which European patents are to be conferred the same rights in each contracting state as would be conferred by a national patent granted in that state.  It also suggests that, during this interim period at least, there may be an additional incentive for those seeking software patents to choose national patents.

There is much commentary on this area with different countries taking different approaches to adopting the UPC Agreement.  With 9 out of 13 necessary ratifications already obtained, and the UPC expected to launch as early as January 2017, exciting developments in the field await, not least the filing strategies that patent applicants will adopt, given the wider range of options available to them in respect of both the patents themselves and the court where they are to be enforced.