Category: News

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Brief news about the UPC Case Management System and the UPC new website:

Brexit and the German constitutional challenge

Since 20th January 2016 the Unified Patent Court has a new website which will in the future allow the public to search for cases and documents. The UPC also now appears to have a “slogan” : “A single patent court covering 25 countries”.

The new version is not more user-friendly than the previous one, but it gives direct access to the UPC Case Management System (top right corner).

The UPC Case Management also circulated its latest developments:

  • Browser: The UPC Case Management warns that it will only be supported by moderns web browser (Google Chrome 46, Firefow 38.4SR, Safari 8, Internet Explorer 11). This information is important as it will not be possible to connect to the UPC Case management with an older web browser.
  • Document support: The document created internally and externally by the Case Management Support will be in ODF v1.2 format; the documents submitted by the court will very probably be in PDF text format.
  • Security: The UPC Case management is investigating the possibility of using mobile phones as a secondary authentication method for the Case Management System. This new security system will be tested this year.
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UK Government’s response to its consultation on secondary legislation implementing the UPCA: How will the UK legislation be amended to be aligned on the UPCA?

In  June 2014, the UK Government through the Intellectual Property Office opened a consultation to seek 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“.

This week, the UK Government published its response to the consultation and  the draft statutory instrument (SI) which will accommodate the UPC. It has to be noted that, although very short, this statutory instrument is particularly difficult to read as it amends certain sections of the Patents Act 1977, specifies which sections of the Patents Act will apply to Unitary Patents and which ones will not, and incorporates by reference in the Patents Acts some Articles of the UPC Agreement.

The questions listed for the public were:

Questions on changes relating to Jurisdiction

1. The aim of the proposed changes to UK law is to ensure the correct division of competence between UK courts and the UPC, in accordance with the UPC Agreement:a. Do you think these changes achieve this aim? b. Why do you think this?

2. The draft legislation aims to reflect the transitional period set out in the UPC Agreement. a. Does the draft legislation clearly implement the transitional period provisions of the UPC Agreement? b. What, if any, improvements would you suggest?

3. What is your view on the provision of an opinions service for a Unitary Patent? If possible, please provide evidence in support of your views.

4. The proposed changes will mean that UK courts will not have jurisdiction for certain disputes related to EP(UK)s, Unitary Patents or related SPCs. a. What, if any, impact do you think the changes to jurisdiction introduced by the legislation will have on your business? b. What, if any, impact would there be on you as a patent owner, a person wishing to challenge the validity of another’s patents, a patent attorney, lawyer, a translation service provider, or other (please define)? If possible, please provide evidence in support of your views.

5. There will be a section of the central division in London which will deal with revocation cases on life sciences. a. How will the presence of the central division in London affect you? b. Do you anticipate using it? c. If possible, please provide evidence in support of your views.

6. The UK can have a local division which will deal with infringement cases. a. How important is it to your business to have access to a local division of the UPC within the UK and why? b. Is the location within the UK important to you? If possible, please provide evidence in support of your views.

7. Patent owners and applicants will be able to register an opt out of the UPC during the transition period, which will apply for the lifetime of the patent. What factors will influence you in choosing to opt-out or not of the UPC’s jurisdiction?

Questions on changes relating to the Unitary Patent

8. The aim is that UK law is compliant with the Unitary Patent Regulation. a. Are the proposed changes sufficient to ensure compliance of UK law with the Unitary Patent Regulation? b. If not, why not?

9. We propose that all the provisions of the Patents Act 1977 which apply to Unitary Patents should apply in the same way as they apply to EP(UK)s, except where they are expressly modified. What is your view of this approach?

10. What is your view on whether double patenting should be allowed for Unitary Patents?

11. What is your view on extending the groundless threats provisions to threats made in the UK in relation to Unitary Patents?

12. a. What, if any, impacts on your business do you foresee of the proposal to extend the restriction on double patenting to Unitary Patents? b. How might this affect your likelihood of seeking unitary patent protection?

Questions on changes relating to Infringement

13. The proposed changes to infringement include the modification of some provisions to account for the territory of the Unitary Patent and the introduction of two new exceptions. Are the proposed changes sufficient to give effect in UK law to the infringement provisions of the UPC Agreement?

14. We have taken an approach of making only minimal changes to implementing the infringement provisions. This means that the exact wording of the infringement provisions found in the UPC Agreement is not replicated in section 60 of the Patents Act. What do you think the consequences are of this approach?

15. At this stage we have taken two different approaches to the way the two new exceptions to infringement are drafted. For the plant breeders exception, we have copied out the wording as found in the UPC Agreement; whereas the software exception makes a direct reference to the UPC provisions. a. What is your view on which form of words works best? b. Should the same approach be adopted for the two new exceptions or is it preferable to adopt different approaches?

16. a. What is your view of the proposed changes to align the exceptions to infringement in the Patents Act with those of the UPC Agreement? b. Would you be affected by these changes, if so, what impact might this have? 17. When should the new provisions on infringement apply and why?

18. We propose changing section 60(5) of the Patents Act to include an exception from infringement for the use of biological material for the purposes of breeding, or discovering and developing another plant variety. What, if any, would be the impact on your business of doing this?

19. We propose changing section 60(5) of the Patents Act to include an exception from infringement for an act permitted under Articles 5 and 6 of Directive (EC) No 2009/24 on the legal protection of computer programs and the use of information obtained by such an act. What, if any, would be the impact on your business of doing this?

20. a. How might the proposed new exceptions affect your business in terms of licensing of patents relating to biological material or computer programs? b. What evidence can you provide in support of your view?

The UK Government in its response to the consultation clarifies the following points:

  • Comptroller: where actions are under the exclusive competence of the UPC, the Comptroller cannot retain jurisdiction as a tribunal. The Comptroller will provide a non-binding opinions service. The Comptroller’s power to revoke a patent on the basis of an opinion finding a lack of novelty or inventive step will however not apply to Unitary Patents or EP(UK)s which have not been opted out, because the revocation of those patents will be part of the exclusive jurisdiction of the UPC.

  • Enforcement of UPC court orders:  a new section on enforcement will be included in Schedule A4 of the SI to provide for the enforcement of UPC orders and decisions in primary legislation, and therefore make it clear that such orders and decisions are enforceable in the UK.

  • Consequential changes to the Patent Act:  section 130(1) of the Patents Act (Interpretation) adds the UPC to the definition of “court”. It is therefore no longer necessary to amend section 27(2) (General power to amend specification after grant) to make specific reference to the UPC.

  • Double patenting: The government is unchanged in its view that, on balance, the best policy is to prohibit double patenting. The law will be consistent for all European Patents valid in the UK whether they benefit from unitary effect or not.

  • Groundless threats:  The government has considered a number of options to ensure that there is a sufficient link to the UK for any groundless threats action and is considering primary legislation to take forward the Law Commission’s recommendations for reform of the law on groundless threats across patent, trade mark and design law.  The Law Commission specifically recommended that the law on unjustified threats applies to the Unitary Patent and that a new test for a threat of infringement proceedings be provided, to ensure that it only covers alleged threats relating to an act done or which, if done, would be done in the UK.

  • General approach on infringement:  Changes to the Patents Act are only proposed where there are material differences between the Act and the UPCA, this means that for many existing provisions there are no changes to the wording if it is not deemed essential.

  • Proposed alignment of new infringement exceptions :  the new exceptions to infringement were of interest to many of those that responded to the consultation. The UK government is still however of the view that minimal changes are required to implement Articles 25-27 of the UPC Agreement (Art 25: Right to prevent the direct use of the Invention; Art 26: Right to prevent the indirect use of the invention; Art 27: Limitations of the effects of a patent). Consequently, the government intends to only amend section 60 of the Patents Act 1977 (Meaning of Infringement) to the extent that it is necessary to introduce the exceptions to infringement which do not currently exist in UK law.

  • Plant breeding exception: The government believes that the plant breeding exception may bring benefits to the plant breeding industry in the UK. Introducing a new exception to infringement for plant breeding which implements Article 27(c) of the UPC Agreement will produce the most benefits for users and also ensure consistency as it will apply to all patents whether European or national.

  • Computer programs exceptions: Much consideration has been given to this issue and on balance the government finds that in this instance it may be best to treat the implementation of the exception in two stages. Initially implementation will be for European patents only (encompassing Unitary Patents, as well as bundle patents – whether or not they are opted out of the UPC), with a view to extending the exception to domestic GB patents following a review of its performance in practice.

  • Changes to UK Law to define infringement of the Unitary Patent: sections 60(1) and 60(5)(d)-(f) (Meaning of Infringement) of the draft legislation will need to be amended so that references to the United Kingdom would be taken as referring to the Member States who are party to the UPC Agreement instead. This will ensure that all of the infringement provisions apply correctly for the entire territory covered by the Unitary Patent. The previous approach, which referred only to the UK could in fact have resulted in infringement only being found if the act occurred in the UK.

  • Transitional arrangements: The government has now included provisions in the legislation which take into consideration the transitional arrangement.

The Statutory Instrument will now need to be approved by both Houses in Parliament before the UK can ratify the UPCA; it will however not come into force before the UPCA itself does.

 

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The European Commission’s take on the UPC’s impact on SMEs:

Brexit and the German constitutional challenge

The European Commission published in the last quarter of 2015 a “Staff working document”  analysing Europe’s single market strategy and ways to encourage modernisation and innovation within the EU.  The consolidation of Europe’s intellectual property framework, is -as expected- a pillar of the Commission’s strategy.  The Staff working document,  in Section 3.3.1, looks specifically at the effects of the UPC on the consolidation of Europe’s IP structure, and in particular on SMEs.

The impact of the UPC on the latter has been a hot topic since the start of the Unitary Patent Package and especially since the draft cost guidelines were published (see our post here). In fact, it has been feared that high litigation costs would be detrimental to SMEs, leaving them struggling to enforce their IP rights or defend themselves. The European Commission establishes in this document that if only 17% of all patent technology can be attributed to SMEs, “the cost exposure for IP rights and particularly patent litigation is significant, hits SMEs disproportionately hard and acts as a serious deterrent for SMEs to engage in patenting in the first place“. Under the Unified Patent Court, SMEs may indeed have to pay, the winner’s court fees of up to EUR 220, 000 euros, the winner’s legal costs of up to EUR 3 millions, plus damages.

In order to counter the negative effects of the UPC on SMEs the Commission therefore highlights a few measures:

  • The Commission considers that the development and launch of a European Commercial IP legal costs insurance could negate the risk of legal fee exposure and “lead to more investment by banks and other financial institutions into innovative start-ups and SMEs” thanks to the security of insurance and the possibility to increase the value of IP assets. The commission believes that this litigation insurance market could develop at European level as the scale would be considerably bigger than national level where it failed to grow . This would be launched when the unitary patent comes into effect.
  • COSME funds (European programme for small and medium entreprises), designed to encourage innovative European SMEs will be used to assist the latter in applying for European IP titles including the Unitary Patent.
  • The Horizon 2020  SME instrument will be used to “encourage European ‘disruptive’ innovators to protect their investments with unitary patents so that they exploit them commercially at EU level, rather than at national level where they may not be commercially viable“.

A more accurate analysis of the impact of the UPC on SMEs and response to the challenges that this will raise, will however only be possible once the definite cost guidelines are published scheduled for the coming months.

Furthermore, under Section 3.3.2 of the “Staff working document” the European Commission also voices its concerns regarding the following issues, although not specific to SMEs are essential in securing legal certainty for all UPC users:

  • “The coherence between the upcoming unitary patent and current EU rules on SPC – in the absent of a unitary SPC title – will be important. SPCs are instrumental for industry sectors whose products are subject to regulated market authorizations;
  • The consequences of the rejection of a request for unitary effect, and the revocation of a unitary patent due to defeating national prior art 203 and the possible acceptable conditions to convert such a putative unitary patent into a bundle of national patents;
  • The principle of non-double protection deriving from unitary patent and national patents, except in very limited circumstances; and
  • The possible issues stemming from the obligation to designate all participating Member States for the purpose of obtaining a unitary patent.“

These concerns raised by the Commission seem to be especially important in the light of the new target of 0.25% in EU GDP evaluated by the Commission, which captures the possible net productivity impact resulting from the reduction of validation and maintenance fees in the Member States for patents granted by the European Patent Office and, subsequently, the increase in the number of non-national patent rights enforced.

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On your marks, get set, go! Candidates Judges will be able to apply for the UPC before the end of March 2016.

UPC Judges recruitment 2019

A recent interview of Sir Robin Jacob, Chairman of the UPC Advisory Committee, gives indications as to the procedure and timeline that the UPC will follow to select and appoint judges. This selection should start within two months, with the publication at the end of February/beginning of March 2016 of an announcement and online application.

In 2013 an initial call for expression was published and received over 1300 responses, a much higher number than expected. This was not a formal job application but “an initial assessment prior to the formal application process” which allowed the UPC Advisory Committee to identify 354 eligible legally qualified judges  and 341 eligible technically qualified judges. Out of these candidate Judges,  183 required training and about 20 of them were sent to Budapest last year to learn about  basic patent law. Candidates who applied to this first call of expression and new candidates are now invited to submit their application to the new formal recruitment process.

The new online application process  should allow the Advisory Committee’s Human Resources and Training group to identify very quickly the legal, technical and languages expertise of the candidate judges and therefore facilitate the selection process. It is expected that about fifty legally and fifty technically qualified judges will be selected. The number of appointed judges will initially be kept small to match the expected workload.  A pool of appointable candidates will nonetheless be on hand to allow the UPC to respond if needed to high numbers of cases.

The fact that most judges will be working part-time for the UPC raises however two issues. First under the UPCA, national judges are allowed to work part-time at the UPC but lawyers can only do so with special permission. This, as highlighted by Sir Robin Jacob, can be a problem for countries such as the UK which have a specific tradition of using lawyers as judges on a part-time basis. Moreover, some countries do not permit their judges to be part-time, and this will necessitate an amendment of national laws.

 

 

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UPC Judges training and appointments- What are the next steps in 2016?

UPC Judges recruitment 2019

As posted here the training for 18 “Extra Training Judges”and Technically Qualified Judges started in 2015. The next steps for the nomination in 2016 of UPC Judges were discussed at the EPLAW Congress in Brussels on 7th and 8th December 2015. It appears that:

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Alexander Ramsay, the Chair of the Preparatory Committee, on the UPC latest developments:

Alexander Ramsay, the newly elected Chair of the Preparatory Committee and Deputy Director at the Division for Intellectual Property and Transport Law Ministry of Justice in Sweden,  talks about the latest developments of the Unitary Patent package in an interview published on 15/12. Here is a summary of the activity of the Preparatory Committee and the last steps that must be taken before the entry into force of the UPCA:

Introduction date of the Unitary Patent Package:

The Preparatory Committee is trying to conclude its preparatory work by mid-2016. This will then be followed by “a period of provisional application of at least 6 months where after the UPC Agreement can enter into force and the Court become operational. However to start provisional application 13 Member States, including France, Germany and the United Kingdom, will need to ratify or at least get parliamentary approval to ratify the Agreement.”

Latest development of the UPC: 

  • The Rules of Procedure were agreed, but will need to be amended when the Committee agrees on court fees and the ceilings of the recoverable costs.
  • The Committee conducted a consultation on the court fees and the ceilings of the recoverable costs and is now considering the outcome and working on an adjusted proposal. 
  • Development of IT is on track. IT system will start to be “tested, fine-tuned and adjusted” in the beginning of 2016.

Costs and Fees: 

  • The Preparatory Committee “is likely to be able to conclude its work in December 2015 on the level of the renewal fees, the distribution of income from the renewal fees and the implementing rules“.

Protocol on the provisional application of the UPCA: 

  • The provisional agreement on the UPCA will allow for the organisation and all the formal organs of the Court to be formally established.
  • This will allow for all decisions to be taken “in the good order prescribed by the Agreement, e.g. employ judges, form a Presidium and elect the two Presidents”.
  • It will also allow the judges to prepare and test run all the systems  before the entry into force of the Agreement.
  • Finally,  it will also be possible to file opt-outs at the Registry. The opt-outs will therefore be effective from the first day of the entry into force of the Agreement.

 

The overview of the 13th meeting of the Preparatory  Committee can be seen here.

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The secondary legislative framework necessary for the implementation of the UPC adopted by the Select Committee

The Select Committee adopted on 15/12/15  a series of agreements necessary  for the implementation of the Unitary Patent package:

  • The Rules relating to Unitary Patent Protection,
  • The Rules relating to Fees for Unitary Patent Protection,
  • The Rules relating to the distribution of fees amongst the participating Member States,  
  • The Budgetary and Financial Rules.

The Committee has therefore now put into place a comprehensive and complete secondary legal framework for the unitary patent, which will allow for the implementation of the Unitary Patent package.

As the EPO President Benoît Battistelli declared, the legal far: “This is a hugely significant occasion for the European patent system. With the adoption of these rules today, the preparations for the unitary patent are complete. We are now legally, technically and operationally ready to deliver the unitary patent. The only remaining step is the opening of the Unified Patent Court and the finalisation of the ratification process at national level. We hope this will happen in 2016 and we are convinced that it will boost innovation in Europe and will be beneficial for the European economy, especially for European SMEs.”

As a reminder: The Unitary Patent system and the Unified patent Court will only come to life once thirteen states, including France Germany and the UK, have ratified the Unified Patent Court Agreement. So far eight states, including France, have ratified. See our posts on ratification here.

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Updates on the Protocol on Provisional Application of the Unified Patent Court Agreement:

protocol to the agreement on unified patent court on provisional application

The Protocol on Provisional Application of the Unified Patent Court signed on 01/10/15  has had a few updates since its our first post:

  • Hungary signed the Protocol on 07/10/15 after  its representative was prevented from signing the Protocol on 01/10/15, as the necessary Hungarian legal requirements had not been completed on time.
  • The Netherlands made a declaration stating that it will be bound by the provisional agreement from the day it will ratify the Unified Patent Court Agreement.
  • The United Kingdom made a reservation to the Unified Patent Court Agreement stating that it “shall not provisionally apply Article 4 of the Agreement on a Unified Patent Court”.

The Protocol will allow  “final decisions on the practical set up of the Court” to enter into application such as the “recruitment of judges and testing of IT systems“,  to permit a smoother set up of the court. The provisional application phase will also be used to allow for early registration of opt-out demands.