New gateway to the UPC: Irish referendum to be held 6th-9th June 2024

Irish Enterprise Minister Simon Coveney has today gained Cabinet permission to draft the bill for the Unified Patent Court (UPC) referendum, and the wording of the proposed referendum can now be prepared. The Government plans to hold this referendum at the same time as local and European elections between the 6^th and 9^th June 2024. 

For some UK-based law firms, Irish ratification presents a valuable gateway to engaging in UPC litigation. Firms such as Bristows who have already set up Irish offices and begun obtaining Irish practising certificates for their patent litigators will be in a strong position to take advantage of the further possibilities that an Irish local UPC division may present.

Ireland signed the UPC Agreement in 2013. However, a referendum must be held before it can ratify the UPC Agreement, as this entails a transfer of jurisdiction in patent litigation to the UPC, and an amendment to Article 29 of the Constitution will be required to add the UPC Agreement as an international agreement.

Four out of five companies previously responded to a joint Ibec-APTMA survey stating that the referendum must take place back in 2023. With what appears to be overwhelming support, it is widely expected that the referendum will pass. This would bring the total number of countries that have ratified the UPC to 18, following the opening of the court in June last year. 

Once ratified, Ireland intends to set up a Local Division of the UPC. This will be the only Local Division with a common law background. Coupled with the fact Ireland is an English-speaking country this could offer a very attractive proposition to some multinational litigants. Furthermore, Ireland’s historic policy of attracting foreign direct investment means a disproportionate amount of R&D and manufacturing operations (and thus potentially infringing acts) take place there. As a result, if a litigant is pursuing a competitor’s activities in Europe, they may well consider the Local Division in Ireland as an appropriate place to bring a claim. 

From a practical perspective, Ireland’s experience with common law procedures may well influence the continuing development of UPC case law. For example, many common law procedures have been imported into the rules of the UPC system, such as the duty of full disclosure, cross-examination of experts, experiments, and security for costs. Lawyers and judges from civil law jurisdictions may be less familiar with these procedures, so they may look to Ireland for an indication as to how these rules should be implemented. 

The staggered timing of Member States joining the UPC creates some complexity, resulting in different scopes of protection of Unitary Patents as protection is only provided for the territories of Member States in the system at the time a patent is granted.  However, unitary patents granted after Irish ratification will benefit from protection in the extended territory.  The remaining member states that have signed up but have yet to ratify are Cyprus, Czechia, Greece, Hungary, Romania, and Slovakia.

UPDATE: the referen