Category: News

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The Select Committee has adopted the True Top 4 for the renewal fees of the Unitary Patent:

The Select Committee endorsed today the True Top 4 proposal for the renewal fees applicable to the Unitary Patent. The EPO reports that this proposal was adopted by the EU member states participating with the required 3/4 majority.

The True Top 4 proposal corresponds to the total sum of the renewal fees currently paid for the four most frequently validated countries (Germany, France, UK and the Netherlands), and contains a clause for possible revision after four years. Special consideration is also given to the situation of SMEs.

The True Top 4 proposal is divided as follow:

2nd year: 35 EUR12th year: 1, 775 EUR
3rd year: 105 EUR13th year: 2, 105 EUR
4th year: 145 EUR14th year: 2, 455 EUR
5th year: 315 EUR15th year: 2, 830 EUR
6th year: 475 EUR16th year: 3, 240 EUR
7th year: 630 EUR17th year: 3, 640 EUR
8th year: 815 EUR18th year: 4, 055 EUR
9th year: 990 EUR19th year: 4, 455 EUR
10th year:  1, 175 EUR20th year: 4, 855 EUR
11th year: 1, 560 EUR

This proposal was preferred to the True Top 5 for which the renewal fees matched the five most frequently validated countries (Germany, France, UK, Netherlands and Sweden) and foresaw a 25% fee reduction for the first ten years of the lifetime of the patent for specific entities such as SMEs, universities and public research institutions. Under Top 4 proposal the patentee will have to pay a total of EUR 35, 555, whereas under Top 5 the patentee would have faced an overall cost of EUR 41, 955 and EUR 40, 403 for respectively the normal and reduced levels.

Putting aside the fear that these fees are still too high for SMEs, it is good news to have a definite idea of renewal fees for the Unitary Patent as it should enable us all to anticipate better when Unitary Patents are the most relevant to patentees.

You can see our previous posts about the different proposals made by the EPO on renewal fees here (May 2015) and here (March 2015).

 

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In-house counsels, have your say about the Unified Patent Court and the Unitary Patent:

Managing Intellectual Property launched on 18th June a new survey for in-house counsel to assess the evolution of concerns and views about the UPC. This survey is part of a bigger initiative by Managing IP which already organised a first survey at the beginning of 2015 and which will organise a third one before the end of the year.

The first survey on the Unitary Patent and Unified Patent Court showed “broad support fo the new system, with the majority of respondents saying that they will use (the Unitary Patent and the Unified Patent Court) and 46% saying that it will be good innovation for Europe”.

This second survey now comprises 6 short questions which are designed around two themes. First, it assesses “how the attitudes to the new system  have change” and what specific concerns about the UPC in-house counsels have. It then features questions about the Unitary Patent fees and the Unified Patent Court fees.

If you wish to participate you can find the link here.

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The UPC Preparatory Committee publishes a new roadmap

Brexit and the German constitutional challenge

The Preparatory Committee published last Tuesday (16/09/2014)  an updated roadmap which highlights the amendments to key millstones towards the delivery of the European Package.

If this new version of the roadmap starts with the work completed in 2014, most of it is dedicated to the ongoing work divided into five areas of work: the Legal Framework, the Financial Aspects, IT, the Facilities, and the Human Resources and Training.

Here are the main points of the new roadmap:

 

Legal framework:

  • The Preparatory Committee plans for the Rules of Procedure to be agreed upon in May 2015  after being amended and reviewed by a first team.
  • The rules on Legal Aid were discussed in July 2014 and a final draft will be agreed by January 2015.
  • A consensus was reached in July 2014 on the proposals on the Rules for the Administrative Committee of the UPC and on the Budget Committee of the UPC.
  • A second report is expected in November 2014 on Mediation and Arbitration.
  • A revised draft for the Rules of the litigation certificate for Patent Attorneys is expected for early 2015, after a public consultation in June and July 2014 on the first draft published in March.

 

Financial aspects:

  • A final agreement on financial regulations which includes the provisions concerning the establishment, structure and implementation of the budget, internal control and audit procedure is scheduled for October 2014. `

 

  • An evaluation of the budget must also be done in order to quantify the operational costs for the next seven years while taking into account that during the transitional period many costs will be borne by the Signatory States hosting seats or divisions of the Court.

 

Legal Framework and Financial Aspects on Court fees and Recoverable costs:

The Legal Framework team and the Financial Aspects team are both responsible for the Court fees and the recoverable costs. While the legal group will primarily assume the responsibility for the establishment of a schedule of the different fees, the financial group will determine the amount for those different fees of the court.

“A schedule for the Court fees, containing of a fixed fee as well as a value based fee above the defined ceiling of the fixed fee shall be established. Also a method for the calculation of the value of the case shall be defined. The question of court fees is also dealt with by the financial group. (…)  A scale of recoverable costs shall be adopted, which shall set ceilings for such costs by reference to the value of the dispute. ”

The discussion on Court fees will start at the end of 2014 and will be followed in spring 2015 by the consultation on fees which will then allow the budget for the first year to be finalized.

 

Human Resources and Training:

  • The training of candidate judges, the nomination of the first group of judges, and the organisation of the first pool of judges seem to be a priority for the Preparatory Committee. The Preparatory Committee is focusing at the moment on a provisional intensive training for candidate judges which should run during  the preparatory phase and the first year of the UPC. Preparations for this training have hence started with the first training programs expected to start before the end of December 2014. This first training initiative will then be followed by a “permanent training framework, that shall be further developed and endorsed by the Administrative Committee once established “.

 

  • For legally qualified judges, training should consist of advanced courses in patent law and patent litigation, possibly combined with mock-trials and internships at patent courts in countries with highly specialized and highly experienced patent courts as well as courses on the UPC Agreement and the Rules of Procedure. For technically qualified judges training should consist of basic concepts of patent law relating in particular to the validity and basic concepts of civil procedure, as well as training on the UPC Agreement and the Rules of Procedure. For both legally and technically qualified judges language training should allow judges to work on files and participate in deliberations on a patent case in at least one language which is not their mother tongue.

 

  • Preparations are also being made for the nomination of judges. A pre-selection process was concluded in July 2014, and a provisional list of suitable candidates was approved by the Committee.  The final number of judges however will be determined  with regard to the number of cases and divisions. It is thus assumed that in the early years, the UPC will work as much as possible with part-time judges and (in particular in the local divisions with high workload, the central division and the Court of Appeal) a limited number of full-time judges. Hence, “recruitment of the first judges of the UPC will aim at appointing a sufficient number of part-time and full-time judges before the entry into operation of the UPC and to create a reserve list of judges who could be appointed should the case-law increase more than expected.”
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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.

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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.

 

 

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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.

 

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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

 

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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.

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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.