S T A T U T O R Y  I N S T R U M E N T S  
2016 No. 388 
PATENTS 
The Patents (European Patent with Unitary Effect an d Unified 
Patent Court) Order 2016 
Made  - - - - 12th March 2016 
Coming into force in accordance with Article 1(2) 
The Secretary of State has been designated for the purposes of section 2(2) of the European 
Communities Act 1972( a) in relation to intellectual property (including b oth registered and 
unregistered rights)( b). 
The Secretary of State makes this Order in exercise  of the powers conferred by that section and 
section 88A of the Patents Act 1977( c). 
In accordance with section 88A(6) of that Act and p aragraph 2(2) of Schedule 2 to the European 
Communities Act 1972( d), a draft of the Order was laid before Parliament and approved by 
resolution of each House of Parliament. 
Citation, commencement and extent 
1. —(1) This Order may be cited as the Patents (Europe an Patent with Unitary Effect and Unified 
Patent Court) Order 2016. 
(2)  This Order comes into force on the date of entry in to force of the Agreement on a Unified 
Patent Court signed at Brussels on 19th February 20 13(e). 
(3)  This Order has the same extent as the Patents Act 1 977, 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 u se), in subsection (6)( f), after “Act,” insert 
“or, in the case of a European patent (UK), has bee n allowed under any of the provisions in the 
Agreement on a Unified Patent Court,”. 
                                                                                                                                            
(a) 1972 c.68; section 2(2) was amended by the Legisl ative and Regulatory Reform Act 2006 (c.51), sectio n 27(1)(a) and the 
European Union (Amendment) Act 2008 (c.7), Schedule , Part 1. 
(b) S.I. 2006/608. 
(c) 1977 c.37; section 17 of the Intellectual Propert y Act 2014 (c.18), which inserted section 88A into the Patents Act 1977, 
was brought into force on 1st October 2014 by S.I. 2014/2330. 
(d) Paragraph 2(2) of Schedule 2 was amended by the L egislative and Regulatory Reform Act 2006 (c.51), s ection 27(2)(a). 
(e) Cm 8653. The date on which the treaty enters into  force for the United Kingdom may be found on the r elevant page on UK 
Treaties Online at this link: http://treaties.fco.g ov.uk/treaties/treatyrecord.htm?tid=14651 
(f) Section 58(6) was amended by the Patents Act 2004  (c.16), section 2(2)(a).  2(3)  In section 60 (meaning of infringement) in subsecti on (5)( a), 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 a ct or use referred to in Article 27(k) of 
the Agreement on a Unified Patent Court.”. 
(4)  In section 60 (meaning of infringement) after subse ction (6G)( b), insert— 
“(6H) Subsection 5(k) applies to an act or use in r elation to a European patent (UK) or a 
European patent with unitary effect, but does not a pply to an act or use in relation to a 
patent granted by the comptroller.”. 
(5)  In section 77 (effect of European patent (UK))( c)— 
(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 A greement 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 tr eated as never having applied in respect 
of a European patent (UK) whose unitary effect is r egistered 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 Unifie d Patent Court 
(1) Schedule A3 contains provision about the applic ation of this Act in relation to the 
European patent with unitary effect. 
(2) Schedule A4 contains provision about the jurisd iction of the Unified Patent Court in 
relation to the European patent (UK) and the Europe an patent with unitary effect.” 
(7)  In section 91 (evidence of conventions and instrume nts under conventions)( d)— 
(a)  in subsection (1)(a), after “the Community Patent C onvention” insert “, the Agreement on 
a Unified Patent Court”; 
(b)  in subsection (6), in the definition of “relevant c onvention court”, after “party to the 
relevant convention”, insert “but does include the Unified Patent Court;”. 
(8)  In section 92 (obtaining evidence for proceedings u nder the European Patent Convention)( e), 
in subsections (1) and (5), after “European Patent Convention” insert “or proceedings before the 
Unified Patent Court”. 
(9)  In section 130 (interpretation)( f)— 
(a)  in subsection (1), insert the following definitions  at the appropriate places— 
                                                                                                                                            
(a) Section 60(5) was amended by S.I. 2000/2037 and S .I. 2005/2759. 
(b) Section 60(6G) was inserted by S.I. 2014/1997. 
(c) Section 77 was amended by the Copyright, Designs and Patents Act 1988 (c.48), Schedule 5, paragraphs  8 and 21; the 
Patents Act 2004 (c.16), Schedule 1, paragraph 2; S .I. 2005/687; the Intellectual Property Act 2014 (c .18), Schedule, 
paragraph 6. 
(d) Section 91 was amended by the Patents Act 2004 (c .16), Schedule 2, paragraph 20. 
(e) Section 92 was amended by S.I. 1979/1714 (N.I. 19 ). 
(f) Section 130(1) was amended by the Armed Forces Ac t 1981 (c.55), section 22(1) and (3); the Copyright , Designs and 
Patents Act 1988 (c.48), Schedule 5, paragraph 5, S chedule 7, paragraph 23 and Schedule 8; S.I. 2000/2 037; the Patents Act 
2004 (c.16), Schedule 1, paragraph 9(1) and (2), Sc hedule 2, paragraph 27, and Schedule 3; S.I. 2004/2 357; S.I. 2006/1028; 
Crime and Courts Act 2013 (c.22), Schedule 9, Part 2, paragraph 27; S.I. 2013/2602.  3““Agreement on a Unified Patent Court” means the Ag reement 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) N o 1257/2012 of the European 
Parliament and of the Council of 17 December 2012 i mplementing enhanced 
cooperation in the area of the creation of unitary patent protection( a).”; 
(b)  in subsection (1), in the definition of “court”, af ter paragraph (c) insert— 
“or the Unified Patent Court, as respects the juris diction 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 A3 
EUROPEAN PATENT WITH UNITARY EFFECT 
Meaning of “relevant statutory provisions” 
1.  In this Schedule “relevant statutory provisions” m eans— 
(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 virt ue of the Unitary Patent Regulation, 
are to be treated as applying in relation to the Eu ropean 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 rela tion 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 unde r section 48); 
section 50A (powers exercisable following merger an d market investigations); 
section 51 (powers exercisable in consequence of re port of Competition and Markets 
Authority); 
section 52 (opposition, appeal and arbitration); 
section 53 (compulsory licences; supplementary prov isions); 
section 54 (special provisions where patented inven tion is being worked abroad); 
section 55 (use of patented inventions for services  of the Crown); 
section 56 (interpretation, etc., of provisions abo ut Crown use); 
                                                                                                                                            
(a) OJ No L 361, 31.12.2012, p1.  4section 57 (rights of third parties in respect of C rown use); 
section 57A (compensation for loss of profit); 
section 58(1) to (6) and (9A) to (13) (references o f disputes as to Crown use); 
section 59 (special provisions as to Crown use duri ng emergency); 
section 60 (meaning of infringement); 
section 64 (right to continue use begun before prio rity 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 (U K)); 
section 80(1) (authentic text of European patents a nd patent applications); 
sections 97 to 100 (legal proceedings) so far as th ey relate to proceedings which do not fall 
within the exclusive jurisdiction of the Unified Pa tent Court as set out in paragraph 1 of 
Schedule A4; 
section 101 (exercise of comptroller’s discretionar y powers); 
section 102 (right of audience, &c in proceedings b efore comptroller); 
sections 103 (extension of privilege for communicat ions with solicitors relating to patent 
proceedings) and 105 (extension of privilege in Sco tland for communications relating to 
patent proceedings) so far as they relate to procee dings before the comptroller; 
section 107 (costs and expenses in proceedings befo re the comptroller); 
section 108 (licences granted by order of comptroll er); 
section 110 (unauthorised claim of patent rights); 
section 116 (immunity of department as regards offi cial acts); 
section 118 (information about patent applications and patents, and inspection of 
documents); 
section 123 (rules); 
section 124 (rules, regulations and orders; supplem entary); 
section 125 (extent of invention); 
section 128A (EU compulsory licences); 
section 128B (supplementary protection certificates ). 
 
Manner of application of relevant statutory provisi ons 
3.  The relevant statutory provisions apply in relatio n 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 Europe an 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 proc eedings 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(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 referen ce to the journal is a reference to the 
European Patent Bulletin. 
(8) In section 55(5)(b), the reference to the Paten t Office is a reference to the European 
Patent Office. 
(9) In section 59(2), the reference to section 69 i ncludes 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 Contra cting Member State in which 
the European patent with unitary effect has effect;  
(b) in subsection (7)— 
 (i) in the definition of “relevant ship” and “rele vant aircraft, hovercraft or 
vehicle”, the reference to the United Kingdom is a reference to a Contracting 
Member State in which the European patent with unit ary 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( a) applies is a reference to an 
aircraft other than an aircraft of a Contracting Me mber 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 meaning s as in Article 2 of the Unitary 
Patent Regulation— 
Participating Member State; 
Register for unitary patent protection. 
SCHEDULE A4 
THE UNIFIED PATENT COURT 
Jurisdiction 
1.  The Unified Patent Court has exclusive jurisdictio n in respect of an Article 32(1) action 
which relates to— 
(a) a European patent with unitary effect, or 
(b) a supplementary protection certificate( b) for which the basic patent is a European 
patent with unitary effect, 
(c) subject to paragraph 2— 
 (i) a European patent (UK), or 
                                                                                                                                            
(a) 1982 c.16. 
(b) Section 128B(2) of the Patents Act 1977 (c.37), a s amended by S.I. 2014/2411, defines “supplementary  protection 
certificate”.  6 (ii) a supplementary protection certificate for wh ich the basic patent is a European 
patent (UK). 
 
Transitional provisions 
2.—(1) The transitional provisions in Article 83 appl y 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 wit h 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 juris diction 
3.—(1) In the case of an Article 32(1) action relatin g 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 va lid patent); 
section 65 (certificate of contested validity of pa tent); 
section 66 (proceedings for infringement by a co-ow ner); 
section 67 (proceedings for infringement by exclusi ve licensee); 
section 68 (effect of non-registration on infringem ent proceedings); 
section 69 (infringement of rights conferred by pub lication of application); 
section 71 (declaration or declarator as to non-inf ringement); 
section 72 (power to revoke patents on application) ; 
section 73(1) to (1C) (comptroller’s power to revok e 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);  7section 63 (relief for infringement of partially va lid patent); 
section 65 (certificate of contested validity of pa tent); 
section 66 (proceedings for infringement by a co-ow ner); 
section 67 (proceedings for infringement by exclusi ve licensee); 
section 68 (effect of non-registration on infringem ent proceedings); 
section 69 (infringement of rights conferred by pub lication of application); 
section 71 (declaration or declarator as to non-inf ringement); 
section 74 (proceedings in which validity of patent  may be put in issue); 
section 75 (amendment of a patent in infringement o r 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 ef fect, 
(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 t o the enforcement of the 
decision or order, 
as if the decision or order had originally been mad e by the enforcing court. 
(2) The enforcing court, or in a relevant Northern Ireland case the Enforcement of 
Judgments Office, may enforce a mediation settlemen t in the same manner as a judgment or 
order of the enforcing court. 
(3) In this paragraph— 
“enforcing court” means— 
(a) as respects England and Wales, the High Court, 
(b) as respects Scotland, the Court of Session, and  
(c) as respects Northern Ireland, the High Court in  Northern Ireland; 
“mediation settlement” means a settlement reached t hrough 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 — 
(a) the decision or order of the Unified Patent Cou rt would, if it had been given by the 
High Court in Northern Ireland, or 
(b) the mediation settlement would, if enforced in the same manner as a judgment or 
order of the High Court in Northern Ireland, 
be enforced by the Enforcement of Judgments Office under the Judgments Enforcement 
(Northern Ireland) Order 1981( a). 
 
Interpretation 
5. In this Schedule— 
(a) “Article 32(1) action” means an action listed i n Article 32(1) of the Agreement on 
a Unified Patent Court; 
                                                                                                                                            
(a) S.I. 1981/226 (N.I. 6).  8(b) “basic patent” has the same meaning as in Artic le 1(c) of Regulation (EC) No 
469/2009 of the European Parliament and of the Coun cil of 6th May 2009 
concerning the supplementary protection certificate  for medicinal products( a); 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 commen cement infringes a patent is to be 
determined in accordance with the law relating to i nfringement in force at the time the act was 
done. 
(2)  In sub-paragraph (1), “commencement” means, in acco rdance with article 1(2), the date 
upon which this Order comes into force. 
 
 Neville-Rolfe  
 Parliamentary Under Secretary of State for Busines s, Innovation and Skills 
12th March 2016 Department for Business Innovation and Skills 
 
 
 
EXPLANATORY NOTE 
(This note is not part of the Order) 
This Order makes provision to give effect to Europe an Union legislation in relation to the 
European patent with unitary effect and to an inter national agreement on the Unified Patent Court. 
The European Parliament and the Council adopted Reg ulation (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 20 13 on a unified patent court (Cm 8653) (“the 
Agreement on a Unified Patent Court”). 
The Order comes into force on the date of entry int o 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 u nder 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 p rovisions on infringement in the Agreement 
on the Unified Patent Court. Article 2(3) inserts t wo new exceptions to infringement in section 
60(5) of the Act. These relate to plant breeding an d computer programs respectively. As regards 
plant breeding, the exception to infringement appli es to the European patent with unitary effect, 
the European patent (UK) and national patents. As r egards computer programs, the exception to 
infringement applies to the European patent with un itary effect and the European patent (UK), but 
does not apply to national patents. This is made cl ear in the amendment made by Article 2(4). In 
all other respects, the infringement provisions app ly 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 mak e 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 an d is to be treated as never having had effect as a 
national patent. 
                                                                                                                                            
(a) OJ No L152, 16.6.2009, p.1.  9Article 2(6) inserts a new section 83A in the Act w hich inserts two new Schedules, A3 and A4, 
to the Act which deal respectively with the applica tion 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 u nitary effect. 
Paragraph 2 of Schedule A3 applies certain provisio ns of the Act which relate to the European 
patent (UK) to the European patent with unitary eff ect, 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 4 8 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 mod ifications set out in paragraph 4(10) 
— The right in section 64 to continue use of an inv ention where such use began before the 
priority date 
— Sections 74A and 74B on opinions by the Comptroll er-General of Patents, Designs and 
Trade Marks as to validity or infringement 
— Section 128B, which applies Schedule 4A, on suppl ementary protection certificates. 
Article 7 of the Unitary Patent Regulation is direc tly 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 i s set out in paragraph 4 of Schedule A3. Apart 
from providing this clarification, the Order does n ot purport to implement provisions of the 
Unitary Patent Regulation that are directly applica ble. 
Schedule A4 deals with the exclusive jurisdiction t he Unified Patent Court has over the matters 
listed in Article 32(1) of the Agreement on a Unifi ed Patent Court. These relate primarily to 
actions relating to infringement or validity of Eur opean patents with unitary effect or European 
patents (UK) or supplementary protection certificat es 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, subjec t to certain transitional and opt out provisions 
set out in paragraph 2 of Schedule A4. Certain prov isions of the Act will no longer apply as a 
result of the jurisdiction of the Unified Patent Co urt 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 enable s 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 t he 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 deci ded in accordance with the law relating to 
infringement at the time the act was done. 
A Transposition Note and a full impact assessment o f the effect that this Order has on the costs 
of business, the voluntary sector and the public se ctor is available from the Intellectual Property 
Office, Patents Legal Section, Concept House, Cardi ff Road, Newport NP10 8QQ and is annexed 
to the Explanatory Memorandum which is available al ongside the instrument on the Legislation 
UK website at www.legislation.gov.uk. 
  
  
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