Lawyers warn time is running out to secure new Scottish patent court
Solicitors and advocates say Scottish-based businesses could soon be forced to take patent disputes to London or Europe unless Scotland secures a local divisional court under the new European Unified Patent Court (UPC) system.
The warning follows the news that Ireland is poised to establish a local division of the new unified patent court, allowing Irish inventors and designers to raise actions to defend and safeguard their patented intellectual assets in their home country.
From as early as 2016, the Unified Patent Court will be part of a new European patent system providing patent protection in 25 EU Member States on the basis of a single streamlined patent application. While London has already been allocated a section of the Central Division of the Court, alongside Munich and Paris, there is currently no firm plan to establish a local division of the court in Scotland.
The Law Society of Scotland and the Faculty of Advocates are urging the UK Government to take steps to designate Edinburgh as the location for a local division of the court. Failure to establish such a divisional court in Scotland will mean the Court of Session will not have any power to deal with any matter related to these new Unitary patents. This contrasts with the existing EU patent regime, under which the Court of Session does have jurisdiction. However, it is set to be phased out in favour of the UPC, meaning it will be more difficult and expensive for Scottish-based businesses to protect their patents under the UPC in future.
Gill Grassie, vice convener of the Society’s Intellectual Property committee, said: “It is great news for Ireland that a local division of the Unified Patent Court has been secured there. The justifications for this for Ireland, such as encouraging innovation, reducing the cost of enforcing property rights and, ultimately, job creation, equally apply to Scotland which has yet to be allocated its own local division.
The UK Government has the power to designate the specific location of a local division within the UK with endorsement by the Administrative Committee of the Unified Patent Court and make the necessary delegated legislation.
Ms Grassie said: “Scotland punches above its weight as a centre for excellence for innovation and is home to a large and diverse array of high technology, intellectual property rich businesses operating in many sectors including, life sciences, renewables, aviation and defence. Many such businesses, including many SMEs, will rely upon patents to protect their valuable technology and innovation. While discussions are ongoing between the UK Intellectual Property Office and the Scottish Courts Service, time is moving on and we are seeing other states such as Ireland and Germany establish local courts.”
The Court of Session, which currently deals with patent disputes, has built up considerable expertise and experience in this area. However it will not have the power to resolve such disputes under the new system.
Ms Grassie said: “Failure to maintain a dedicated local patent court risks damaging businesses that rely on patents to protect their valuable technologies and innovation.
“Such a lack of local access to justice also risks conveying the impression to investors that the intellectual property of high tech industries is not of real concern to Scotland and that, in reality, it ‘does not do patents’. On the face of it, this would cut across the work over many years by the State’s agencies responsible for attracting inward investment in promoting the country as an ideal, cost-effective, competitive location for high-tech and knowledge-based enterprises.”
The Dean of the Faculty of Advocates, James Wolffe QC, said: “I congratulate Ireland on securing a local division of the UPC, which will support business and innovation there. We must continue to press for the establishment of a local division of the UPC in Scotland. This would enable Scottish businesses to resolve disputes over patents locally, more cheaply and more easily. It would support Scottish business, particularly the SME sector, support the retention and development of expertise in Scotland, and support Scottish innovation and research and development”
Notes to Editors
The Intellectual Property Act 2014 makes provision for the implementation of the European Agreement on a Unified Patent Court, paving the way for establishing a new patent court system in the UK.
The new court will deal with disputes about new Unitary Patents set to be granted covering the court’s territory of 25 EU member states.
The full statement from the Irish Government can be found at http://www.djei.ie/press/2014/20141113.htm
Details about the Court are here: http://www.unified-patent-court.org/
For more information please contact Louise Docherty 0131 476 8204 / email@example.com