An independent blog written by highly experienced Intellectual Property Lawyers providing a comprehensive overview of the Unitary Patent and the Unified Patent Court and discusses the latest news on the topic.
Author: Louise AMAR
Louise Amar is a junior lawyer at Amar Goussu Staub. She graduated from the University of Kent (LLB in English and French Law), the Université Paris I Panthéon Sorbonne (Licence) and the University of London, School of Oriental and African Studies (LLM in Law Development and Governance). She completed her Legal Practice Course at BPP London in 2015. Louise has been managing the UPC Blog since 2013.
Last week, Taylor Wessing published its fifth Global Intellectual Property Index which assesses how intellectual property regimes around the world compare with each other.The Index also identifies the IP hot topics among its 8,500 individual assessments from senior industry figures, and this year the Unitary patent was identified as the single most important IP issue!
Just two days before the Brexit referendum we can only hope that this enthusiasm carries weight in the UK’s decision to stay or leave the EU…
Ireland published last week its legislative programme for the current parliamentary session which sets out the legislation that the Irish Government will seek to publish over the next few months. It contains notably the “Amendment of the Constitution (Unified Patent Court) Bill” that will amend Article 29 of the Constitution for it to recognize the Agreement on a Unified Patent Court .
Although heads of bill, or key areas of this bill, have already been approved on 23rd July 2014, Ireland will have to hold a referendum to approve this amendment to the constitution. The Supreme Court has in fact previously held that any transfer of sovereignty, or the transfer of judicial powers to an international body, requires a referendum . The referendum has already been planned for by the Irish Government in its Programme for partnership government (p.153, mistakenly referred to as the Universal Patent Court…), although no date has yet been published.
Finally, Bristows UPC highlights that the Law Society of Ireland has published an ad for the Irish Department for Jobs, Enterprise and Innovation to invite patent judges and practitioners in patent law to put themselves forward for nomination to the Advisory Committee of the Unified Patent Court, that will take soon over the work of the Preparatory Committee.
Ireland seems therefore to have its eyes firmly set on taking part in the UPC, although with its coming live in Spring 2017, whether Ireland will be ready on time is uncertain.
A mock trial addressing the issue of the validity of an opt-out took place in Paris on 06th June 2016. It was organised by the Union pour la Juridiction Unifiée des Brevets (UJUB) and hosted by the MEDEF.
The trial opposed two companies, Haussmann La Riche and Generoso, over the revocation action of one of Haussmann La Riche’s patent. The action had been initiated by Generoso before the UPC central division. Haussmann La Riche however challenged the competence of the UPC, since it considered that it had correctly taken the necessary steps to “opt out from the exclusive competence of the Court”. Generoso on the other hand argued that the UPC was competent because the opt-out had been incorrectly. In fact, the opt-out had been made in the name of a corporate entity which no longer legally existed and did not name the patent co-owner. In the alternative, Generoso argued that Haussmann La Riche’s secretary had no capacity to register the opt-out, as only the head of the patent department and European patent attorney had the authorization to do so on behalf of the proprietors.
According to the UPC Rules of Procedure, the question whether the UPC has jurisdiction must be presented as a Preliminary objection (Rule 19 of the Rules of Procedure, to which Rule 48 in fine refers) within one month of the lodging of the Statement of claim. This question then falls within the competence of the judge-rapporteur (Rule 20), who for this matter is the presiding judge, except if the judge-rapporteur decided to refer the matter to the panel under Rule 102.
Both parties, represented by British, French, Dutch lawyers and patent attorneys presented their arguments to Marie Courboulay (Vice-president of the 3rd Chamber of the Tribunal de Grande Instance of Paris), the French judge-rapporteur who delivered her ruling on the issue of the validity of the opt-out at the end of the trial. She held, in line with the audience’s vote (though it was held in her absence), that the opt-out was indeed invalid and that the UPC was competent.
Yesterday (06/06/16) the Union pour la Juridiction Unifiée organised in Paris an event on the Opt-out. The day was divided between a morning session with panels sharing their position on the Opt-out and clarifying procedural and technical questions while a mock trial examining the validity of an opt-out was organised in the afternoon.
The panel discussions were an opportunity for some useful vocabulary reminders by Pierre Véron, who pointed out the necessity to get used to the UPC vocabulary such as:
staying-in (for European patents without unitary effect but not opted-out) rather than opting-in (as this would refer to a specific action from the patent proprietor to opt-in),
to withdraw an opt-out
To opt out
An opt-out (for those of us who are not English native speaker, the nuance is in the hyphen…)
Beyond issues of lexicology a few important points were clarified by the participants on the different aspects of the opt-out:
On the issue of representatives, all participants were reminded that there is no need to be a “professional” representative, such as a patent attorney or lawyer, to process the opt-out. A person instructed by the company itself, such as an employee of the company can opt-out a patent.
The issue of the impact of late ratifications on the geographical scope of the opt-out was also raised. In fact if a patent is opted out at a time where only 16 member states have ratified the UPCA, what happens when a new country ratifies the Agreement? Does the opt-out automatically applies for this country too? No answer could be given today, but the next (and last) batch of rules of procedure should clarify this matter.
It was also reiterated that if the true owner of the patent is not registered in the registers of all participating member states, he/she must lodge a declaration that they are the true owner.
The IT team confirmed that the option to opt out in bulk (for more than one patent) will be allowed by the Case Management System. It will be possible to manually identify an unlimited number of patents to opt out in the CMS, or to use an “Application Programming Interface” that will allow a selection of patents from a database outside the CMS that will then be exported to the CMS to be opted out. This last option will allow very large numbers of patents to be opted out easily and within a short amount of time.
Finally, the IT team is working on an additional security level that would prevent (or reduce) unauthorized opt-outs (arising from mistakes or maliciously opted out). They are considering different options such as a login linked to some form of ID, the download of a letter of intention/proof of representation/copy of practice certificate/power of attorney, a letter of confirmation sent to the physical address of the patent holder or a fixed line call-back system that would automatically call the patent holder to confirm the opt-out. Some of these options are however costly, while others involve lengthy steps before receiving the confirmation of the opt out. The IT team recommended anyway a close monitoring of patent portfolios in registers.
Lastly, panelists from Bosch, Sanofi, and Ericsson presented their approach to the opt-out: All three highlighted the fact that they would not proceed to a general opt-out. Sanofi explained that they are in the process of selecting which patent they will opt-out by taking into consideration factors such as the patents’ potential for litigation (is it a patent that attracts litigation or not?), the uncertainty as to the application of the Bolar exemption, the problems that might arise from the possible inexperience of judges, but also the necessity to contribute to the elaboration of the case law and to be attuned to what their competitors are doing in this area. Ericsson reported that their strategy was in progress and would take into account their need for flexibility in the choice of courts, the injunction possibilities (for example: will injunctions be available before the UPC for SEPs?), the centralized effect of the UPC versus the national court lock-in effect with the opt-out, and finally the legal uncertainty that comes with the new system. Bosch on the other hand explained that they will be reviewing their patent portfolio throughout the UPC transitional period (7 years from the entry into force of the UPCA and renewable once) and will decide on a case by case basis whether to opt out their patents. Bosch made clear that their decision would be based on criteria that would be directly relevant to the patent, such as the technology protected by the patent or the scale of the investment, rather than on a legal reasoning.
Today the Union pour la Juridiction Unifiée (UJUB) hosted an event on the Opt-out in Paris in which the following news were announced:
The sunrise period’s start is scheduled for October 2016, once the Protocol on the UPC Agreement has been ratified by 13 states having ratified the UPCA.
The coming live of the UPC is on the other hand expected for Spring 2017.
The IT team as well as Alexander Ramsay however warned that due to the uncertainty of the ratification process and the coming referendum in the UK on its EU membership the sunrise period and the coming live of the UPC might be delayed.
Alexander Ramsay also confirmed that the UPC should run its course even if the UK decides to leave the EU although the Brexit would impact the present schedule.
It is highly likely that the Preparatory Committee will have finished its work at the end of June 2016, and will be replaced by the Administration Committee and the Budget Committee.
Last but not least, Bulgaria has deposited its instrument of ratification on Tuesday 31/05/16. Ten countries have thus now ratified the UPCA.
The EPO has created for the existing users of its Online Filing software a plug-in, which simulates the drafting, signing and sending of a request for unitary effect and filing of subsequent documents in a demonstration mode.
Users are invited to send their feedback on the demo to uppolffeedback@epo.org until 31 July 2016.
The EPO however makes clear that “the demo is purely for test purposes only and that completion of the registration procedure has no effect”, the final and operational version of the software will in fact be available before the unitary patent system enters into force.
For a full-on experience, it is still possible to test the UPC Case Management System here.
The Preparatory Committee has published today the report on its last meeting, which took place in the vicinity of the future UPC local division of Hamburg.
Although the report published does not give any detail on the decisions adopted by the Committee, it appears that the Preparatory Committee focused specifically on human resources and financial issues.
The Preparatory Committee is notably working on issues of pensions, payroll, and health care with the International Service for Remunerations and Pensions. It also announced that the training framework of the UPC was agreed, therefore allowing the Budapest training centre of the UPC to proceed with the planning for training for the first year of operation.
The Preparatory Committee also dealt with issues relating to the contributions of Member States during the provisional application period and the first year of operation. The Co-coordinator of the Financial Working Group, Jean-Francois Magana reported that the work is well advanced and that Member States will have a good basis to prepare their first contributions to the budget of the Court. To cater for this specific period the Committee also agreed on a set of adaptations to the Rules of the Administrative, Advisory and Budget Committees and discussed corresponding adaptations for the financial management of the court during this period of time.
Finally, the Preparatory Committee reports that the work on the IT system is progressing well although “it is clear that the IT environment of the Court is an area that will need constant development and attention”.
The 17th meeting of the Committee will be held in Stockholm (future location of the Nordic-Baltic regional division) on 30 June 2016.
It also introduced a bill to amend its existing patent law, guaranteeing dual protection (or double patenting), the enforcement of the Unified Patent Court’s decisions, or the modalities of an action for violation of EU law .
Lithuania could thus become the 10th country to ratify the UPCA after Austria, Belgium, Denmark, Finland, France, Luxembourg, Malta, Portugal, Sweden.
The Italian Council of Ministers has published a press release announcing that it had approved the draft law on the ratification of the Unified Patent Court Agreement that will “lead to the completion of Italy’s participation in the enhanced cooperation in the Unitary Patent package”.
The government declared that “this new phase in the development of the internal market will enable innovating Italian operators to benefit from a patent valid in the whole of the European Union, guaranteed by a supranational and specialized jurisdiction.”
The press release also highlights the fact that Italy will host a local division of the UPC, which the government hopes will be a project “that presents a significant potential for the improvement of the Italian capacity”.
Finally, it is interesting to note that the Italian government refers to the Italian local division of the UPC as a “signal from the (Italian) government to continue to protect and promote the Italian language”, while the issue of the promotion of the Italian language was the very reason Italy initially stopped taking part in the UPC.
The CCBE thereby responds to the Preparatory Committee’s declaration, after its last meeting on 14th April 2016, that the Code of Conduct would be agreed at the end of May, for it to be ready for the UPC’s entry into force in February 2017.
Rule 290 and 291 of the UPC Draft Rules of Procedure in fact respectively provide that representatives before the UPC must comply with the Code of Conduct and if in breach may be excluded from the proceedings by the Court.
The UPC draft Code of Conduct has not however been made public yet, and the CCBE has not had access to it. The CCBE’s general comments therefore provide a helpful insight into the core principles that should govern the UPC Code of Conduct, and, raise important questions about issues such as independence, impartiality and interpretation.
The CCBE focuses on seven points:
“A minimum standard”: The CCBE, fearing that it would be difficult to design “a single Code of Conduct for all representatives covering all matters”, invites the Preparatory Committee to clearly identify the basic legal principles applying to all representatives irrespective of their nationality or position (lawyer, patent attorney, solicitor, etc) to ensure a minimum standard for all appearing before the Court.
“Enforcement of the code”: The CCBE recommends that complaints from the Court about the representatives’ behaviour be “adjudicated by a relevant body rather than the judges themselves or the Court”. The CCBE in fact highlight, that the UPC judges may not have been trained to handle complaints, and, that an independent body would be a guarantee for impartiality .
“Complaints procedure”: The CCBE warns that “(n)either the Rules of Procedure nor the Code appears to explain how a complaint of a breach of the Code is to be made, whether anyone is free to make such a complaint, to whom they should complain, nor whether there is any time limit”.
“Possible conflicting obligations”: The CCBE has identified areas where the UPC Code of Conduct and national codes of conduct may conflict, resulting in impossible ethical dilemmas for representatives who would not be able to comply with both codes. The CCBE therefore calls for a careful review of compatibility of all codes of conduct.
“Appeals”: Neither the Rules of Procedure nor the Draft Code of Conduct explain the appeal procedure allowing the representatives to challenge a sanction. The CCBE alerts the Preparatory Committee of this oversight and advises against designating the UPC Court of Appeal as the appropriate appeal mechanism, which might lack the required independence.
“Sanctions”: The Rules of Procedure appear to indicate that there is only one sanction available to the UPC judges under Rule 291, namely exclusion from the proceedings. The CCBE however points up that “Regulators and Ethics Committees enforcing Codes of Conduct normally have available to them a wide range of sanctions so that they can deal proportionately with each complaint”. In fact, as explained by the CCBE, the consequences of an exclusion can be very severe and significantly affect both parties.
“Interpretation of the code”: The CCBE advises the Preparatory Committee to clarify whether the Code is to be interpreted strictly or liberally, i.e. whether the code of Conduct contains general principles or “detailed and unambiguous regulations”.
The CCBE concludes it letter by regretting not to have more time and more opportunities to contribute to the UPC Code of Conduct, a view shared by the UPC Blog. In fact, a consultation of the future UPC representatives on the Code of Conduct that will regulate their behaviour before the Court would certainly have been very fruitful.
