New expert panel to advise the Preparatory Committee

Brexit and the German constitutional challenge

The Preparatory Committee announced last week that a new expert panel had been set up “on an informal basis and will advise the Chairman and his working group coordinators” (UPC website). This new panel is invited to share its expert knowledge on various different work streams. The Preparatory Committee Chairman is however eager to highlight in the news published on the UPC website that the experts’ work “will not in any way affect or impede the structure that is already in place on formal consultations or the decision-making function of the Preparatory Committee itself.”

The panel is made of 14 members representing lawyers, judges, patent attorneys, and business representatives from France, Germany, Italy, UK and the Netherlands. Their names can be found here.

The Expert Panel’s first meeting will be on 26 September 2014 in London.

Key dates scheduled for the UPC

Key meetings and key dates have now been scheduled for the UPC:

In September 2014: 

  • On September 25th the Preparatory Committee’s Rules of Procedure Working Group will meet.
  • On September 26th the Expert panel of the UPC Preparatory Committee will hold its first meeting in London advising the Committee’s Chairman and Working Group coordinators on the way to follow for the Committee to complete its work programme.

 

In October and November 2014: 

  • On October 28th, the EPO Select Committee on the Unitary patent will meet, followed in early November by the Preparatory Committee’s next meeting.
  • In late November there will be the hearing of user organisations on the draft Rules of Procedure.

 

In 2015: 

  • On  January 10th the Regulation (542/2014) amending the Brussels I regulation will enter into force.
  • Early 2015 (the exact date has not been confirmed) the Advocate General will deliver their opinion on Spain’s challenge to the Unitary Patent package.
  • Mid-2015 (the exact date has not been conformed) the CJEU’s will give its decision on Spain’s challenge.
  • The target date for the implementation of the UPC should be confirmed by 31st December 2015.

 

 

The Select Committee…an update on its work programme

Who is the Select Committee and what is its function?

The Select Committee is established under the European Patent Convention. It consists of all the EU Member States participating in the enhanced cooperation. The European Commission, Business Europe, the European Patent Institute and other EPC Member States that are not participating in the enhanced cooperation have received the status of observers.

The Select Committee has -among other things- been given the task to govern and supervise the activities of the EPO relating to the UPC. An important task during the preparatory phase will be to fix the level of the renewal fees for European patents with unitary effect.

Since its first meeting on 20th March 2013, the Select committee has been regularly meeting and publishing communiqués. It appears from its “updated timeline” published by Bristowsupc that after focusing on institutional matters such as its creation, composition and adoption of its rules of procedure, the Select Committee is now looking at substantive aspects and notably legal, financial and budgetary issues.

What are the legal issues that it must address?

After reviewing in June, September and December 2013 the first Draft Rules for the Unitary Patent Protection, it is now reviewing the second Draft. These Draft Rules relate mainly to the procedures that will be administrated by the EPO in carrying out the tasks that the Participating Member States will entrust to the EPO in accordance with article 9.1 of the EU Regulation N° 1257/2012.

In June 2014: The Committee adopted in principle the Draft Rules relating to Unitary Patent Protection, with the exception of some technical aspects that require further discussion.

What are the financial and budgetary issues that it must address?

The financial and budgetary aspects of the implementation of the unitary patent protection concern mainly the level and the distribution of the renewal fees, the budgetary aspects of the tasks entrusted to the EPO in accordance with Article 9.1 of the EU Regulation N° 1257/2012 and the implementation of the compensation scheme for the reimbursement of translation costs referred to in Article 5 of EU Regulation N° 1260/2012.

In October 2013 a first meeting of the Select Committee was held to start discussions on the financial and budgetary aspects of the implementation of the unitary patent protection. During this meeting statistical and financial information were  presented to the Select Committee.

In March 2014:The Committee adopted the rules relating to the compensation scheme for costs for translations of applications filed in an EU official language which is not one of the official languages of the EPO, the reimbursement of which is available to patent holders obtaining a European patent with unitary effect. However, the financial aspects of the compensation scheme, including the amount to be compensated, will be discussed at a later stage.” (7th meeting of the Select Committee of the Administrative Council of the European Patent Organisation (Munich, 26 March 2014))

In June 2014: If the Committee adopted the draft rules relating to the Unitary Patent Protection, however it did not agree on the level of renewal fees which will have to be fixed by the participating Member States in the Select Committee in October 2014.

 

Last day for the UK IPO consultation on the UPC

Today is the last day of the consultation period -which closes at 11:45pm- launched by the UK Intellectual Property Office on “legislative changes to implement the UPC agreement and comply with the unitary patent Regulation”.

 

The UK Intellectual Property Office is “seeking views on the drafting, structure and effect of the draft legislation which will allow for the implementation of the Unified Patent Court Agreement and the associated EU Regulations which introduce the Unitary Patent.”

They are also asking for relevant evidence on the way that the proposals will work in practice in order to inform our assumptions about economic impacts, and to assist with decisions on the detail of proposed legislation.

The impact assessment of the UPC implementation infringement and implementation jurisdiction, and the statement of innovation can be found here.

 

Brussels I Regulation updates…

So what happened to the Brussels I Regulation since the European Parliament and the Council of Ministers approved its amendments (see our post here)? 

In May 2014, the regulation ( Regulation No 1215/2012) on the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice was published in the Official Journal, amending the EU rules on the jurisdiction of courts and recognition of judgments (or Brussels I Regulation).  However although it entered into force, it will only apply from 10 January 2015.

In August 2014, Denmark after ratifying the UPCA notified the European Commission of its decision to implement the amendments made to the Brussels I Regulation (see paragraph above). Denmark in fact opted-out of the Brussels I Regulation and must therefore notify the Commission of its decision to implement -or not- the content of any amendment made to this Regulation. However, after ratifying the UPC Agreement, following a referendum  on 25 May 2014, it was necessary for Denmark to implement the UPC amendments to the Brussels I Regulation. – See more here

 

UPC Judges candidates…what next?

UPC Judges recruitment 2019

The appointment of judges for the UPC seems to be well on its way. In fact after approving a list of candidates in July during its 6th meeting, the Preparatory Committee is now in the process of notifying the applicants of their eligibility for becoming a UPC judge and whether or not they would require further patent litigation training.

It is however only a press-selection and candidates will have to submit a formal application if they actually wish to become a judge at the UPC. The formal application process has not yet been made public.

Denmark has ratified the UPCA

Protocol to the Agreement on a Unified Patent Court on provisional application

Following a referendum in May 2014 in favor of the UPC, Denmark has ratified the Unified Patent Court Agreement on 20 June 2014. Denmark will establish a local division of the UPC in Copenhagen with Danish and English as official languages.

You can find the ratification table here

Draft rules of Procedure- what is happening now?

The UPC Select Committee held its 9th meeting in The Hague on 24 June 2014.

The Committee has adopted in principle the Draft Rules  relating to Unitary Patent Protection, with the exception of some technical aspects that require further discussion and one rule relating to financial aspects that will be discussed after the summer holiday together with other financial issues. These draft Rules concern the procedures that will be applied by the EPO in carrying out the administrative tasks relating to the European patent with unitary effect.

Work on the level of renewal fees which will have to be fixed by the participating Member States in the Select Committee continued on the basis of two further presentations given by the Office on simulations of fee scenarios and their financial implications for the Office. This work will continue in October.

 

 

UPC First Mock Trial

 

Update: A second Mock Trial is organised by the UJUB in Paris on April 2nd 2015! See our post on this new mock here

 

On May 22nd, a mock trial before the Unified Patent Court at the Central Division in Paris was organised by the Union pour la Juridiction Unifiée du Brevet, the MEDEF, and the Institut National de la Propriété Intellectuelle[1].

 

This mock was opposing two fictitious companies in patent infringement proceedings. The document bundles with the background information, the preliminary objections and the main pleadings of the case can be found here.

 

The trial was chaired by Mr Alain Girardet from the French Court de Cassation, the Judge rapporteur, Dr Klaus Grabinski from the German Bundesgerichtshof, and Mr Walter Holzer, former president of the EPI who held the role of Technical judge.

 

After a quick presentation of the background information by the Registrar, Me Dominique Ménard, the mock trial opened with questions and answers with the Judge rapporteur on the issues highlighted during the interim phase. A video recording of the interim conference was also showed to the audience.  This was followed by the oral submissions of the claimant and defendant. The claimant was represented by Mr Michael Burdon from the United Kingdom, and the defendant by Me Pierre Véron and Me Amandine Métier from France. Finally while the panel was discussing its decision the audience was asked to vote on the outcome of the case.

 

The professionalism of all participants and the resources deployed gave a very realistic feel to this mock trial, which was saluted by the audience. This mock was the first opportunity for all the lawyers present to visualise the different parameters at stake with the UPC. Hence it appeared very clearly to the audience that new technologies and technical resources will be key for the UPC such as with interim video conferences and their coordination between parties across Europe. Similarly this mock trial highlighted very realistically the major differences between national jurisdictions and the UPC, the most obvious ones being of course the language of proceedings and the need to master new and extended rules of procedure.

 

Thanks to the hard work and the talent of its organisers, this mock trial was a real success both in terms of anticipating the legal challenges and benefits for lawyers attached to the UPC and reminding its audience of the central place that the UPC will take when it will come into effect.

The UPC Blog would like to invite its readers to view the mock together with the document bundle of the case here.

 

 



[1] Also sponsored by the AACEIPI, AAPI, ACPI, AFEP, AIPPI, AFPPI, APEB, ASPI, LES.

The “Enhanced European Patent” or some long-waited-for answers on the Unified Patent Court and the Unitary Patent by the Select and Preparatory Committees.

The Unified Patent Court Preparatory Committee and Select Committee recently released an explanatory note on the “Enhanced European Patent System” detailing the purpose of the future Unified Patent Court and Unitary Patent and the key points on how this major patent reform will articulate itself with the existing European and National patents and existing jurisdictions.

 

The UPC Blog has extensively posted on the Unified Patent Court competence and procedure, on the nature of the unitary effect and the general overview and background of both the UPC (Unified Patent Court) and the UP (Unitary Patent). It is however the first time that the committees (see our posts on the Select committee and the Preparatory Committee) involved in the setting up of the UPC release an explanatory note.  It is thus the first time that clarifications rather than interpretations are made about the UPC agreement. This post will focus on three key points of the UPC explanatory note, which bring some explanations to the cacophony of information published so far, without nonetheless answering all the questions.

 

Before looking at these three substantial points, it is important to start with the reassertion from the Select and Preparatory Committees that the Unitary Patent directly derives entirely from the European patent, which provides the shell onto which the unitary effect hooks up. So to obtain a Unitary patent an applicant must first apply for a European patent at the European Patent Organisation, which will handle the application in accordance with the European Convention. It is only after grant that the proprietor of a European patent will have the opportunity to apply for unitary effect.  However if for a European patent it is necessary for the patent holder to validate the patent in each Member state where protection is required, for a unitary patent a single request will give protection in 25 Member States of the European union. (More information on the unitary effect here)

 

The rest of the explanatory note is divided between the UPC and UP, and deals with important questions such as the geographical extension, the general competence of the UPC and the transitional period. The UPC Blog by Lavoix raised in previous posts the problems of legal uncertainty attached to these three topics, we will thus look here at the response of the Select and preparatory Committees. (See Discussion posts on “Opt-out and legal certainty” “The impact of Article 83 UPCA on the applicable law” and “UPC and Infringement actions”)

 

The Geographical extension of the Unitary Patent:

The unitary effect of a European patent will cover the territories of the contracting member states that have ratified the UPC Agreement at the date of the registration of the unitary effect of the individual patent. The explanatory note however makes clear that the geographical perimeter of validity of the unitary effect will not extend following the progressive ratification of the UPC Agreement after the registration. Rather, it will stay the same until all the contracting member states ratify the UPC Agreement. It is only then that European patents registered thereafter will enjoy unitary effect in all participating member states. As for Spain, Italy and Croatia which are not participating in the UP and Poland which is participating but has not signed yet the UPC Agreement, it will be possible for the proprietor of a European patent with unitary effect to choose to validate the patent as a classical European patent.  In addition, it will also be possible to validate the same patent as a European Patent in the ten contracting states of the European Patent Organisation that are not EU Member States. (For more information on the contracting member states and Italy and Spain’s positions).

 

The UPC general competence:

On the general competence of the UPC, the explanatory note makes clear that the UPC has exclusive competence “in respect of civil litigation on matters relating to classical European patents, European patents with unitary effect, supplementary protection certificates issued for a product covered by such a patent and European patent applications”. The UPC will not however have any competence for national patents or supplementary protection certificates granted for a national patent (see our post on supplementary protection patents).

The UPC’s rulings will have effect in the territory of the contracting member states that will have ratified the UPC Agreement.  The exclusive competence of the UPC will also apply to the decisions of the European Patent Office in “carrying out the tasks of administering the Unitary patent set out in the Unitary patent regulations”.

 

The Transitional period: (For background information on the transitional period see here) 

The UPC Agreement provides for European patents a period of seven years, renewable for another seven years, during which they will co-exist with UP’s. However, as it is made clear in the explanatory note, the transitional rules will not apply for European Patents with unitary effect.  The transitional period will only apply to European patents or Supplementary Protection Certificates issued for products protected by European patents. For those European patents, the competent forum during the transitional period will be either the UPC or the existing national courts. So unless an action has already been brought before the UPC, actions for infringement or for revocation concerning European patents or for a Supplementary Protection Certificate issued for a product protected by a European patent may thus still be brought before national courts.

 

The Opt-out is, too, detailed and explained. Hence, “during the transitional period, a proprietor –or an applicant for- a European patent granted or applied for prior to the end of the transitional period or a SPC issued for a product protected by such a patent will also have the possibility to opt out the patent/application/SPC, from the jurisdiction of the UPC unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into register. It will be possible to withdraw such an opt-out at any time. There will be no possibility to opt-out European patents with unitary effect.”  In respect of the opt-out the Select and Preparatory Committees list three benefits of the UPC justifying not opting-out: “a unified jurisprudence resulting in increased predictability and the avoidance of panel litigation; judgments (injunctions, damages) with effect in 25 Member states of the EU; the expectation of speedier procedures than in many of the individual Member States”.

 

It is important to observe however that this explanatory note does not answer central questions such as the possible dual competence between the UPC and national jurisdiction under articles 32 (1) and 83 (1) of the UPC Agreement, the types of actions that would stop a patent proprietor to opt-out or the risk of lis pendens. The UPC Blog will deal with each of these issues in posts to come.

 

You can of course look at the UPCA here and the draft rules of procedures here.