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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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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.

 

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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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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

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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.

 

 

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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.