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.
As announced a few weeks ago, the Unified Patent Court has now published the last Draft Rules of Procedure. This new draft is presented as a “major milestone in the progress of the Committees work” which is “the result of a successful and fruitful collaboration between the Preparatory Committee’s Legal working group and the Drafting Committee”.
You can find below the new Rules below:
[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2015/11/UPC-Rules-of-Procedure.pdf”]
The EPLAW announced in its October newsletter that the 18th Draft Rules of Procedure will be adopted today (19th October) and published thereafter. Rule 5 (opt-out provision), Rule 8 (identification of proprietor) and Rule 14 (language of procedure) have apparently been substantially amended compared to the 17th Draft of Procedure… Furthermore, according to the EPLAW, if this draft may face a few re-numbering of its Rules, it will very likely be the final version of the UPC Rules of Procedure.
So watch this space as we will post the 18th and final Draft Rules of Procedure as soon as the UPC releases it!
The European Patent Lawyers Association issued a statement to its members detailing the different training initiatives developed by the EPLAW and the EPO for candidate UPC Judges.
It appears that in 2015, the EPO Academy ran two training modules for potential UPC judges who had little judicial experience in patents or who were from countries with limited patent litigation, in which they were introduced to basic patent law and patent litigation by well-known European judges and European litigators. The EPLAW in parallel produced e-learning materials which will be published on the EPO’s website before the end of 2015.
2016 will see more training initiatives being organised. The EPLAW notably announces that it will assist the EPO with its standard training programme on infringement and litigation for judges with no or little experience in patent litigation in the EPC countries, and act as representatives in mock trials. Finally, the EPO Academy plans “to run workshops and mock trials for those experienced European patent judges who have applied to be UPC judges concentrating on familiarising them with the Rules of Procedure and the Agreement of the UPC”.
The UK government announced on 11th August that the location of the London Central Division and the UK Local Division of the UPC had been chosen and that a lease had been signed for 8th floor of the Aldgate Tower. The Intellectual Property Office Minister, Baroness Neville-Rolfe published the following statement about these new premises:
“The signing of this lease represents a milestone in the UK’s preparations for the introduction of the Unified Patent Court. Aldgate Tower, with its superb central location, will provide an ideal home for a modern court to support the UK’s and Europe’s leading edge innovative companies. This will further strengthen UK’s legal and professional services sector, and reinforce London’s status as a world leading centre for dispute resolution.”
After rumours that the UPC might be located in Holborn or near Heathrow it seems that the IPO preferred a building in East London, conveniently located in zone 2, and easily accessible. In fact, 5 underground lines, the DLR, London Overground and 3 major rail stations are all within walking distance of the Aldgate Tower. Two Crossrail stations are also underway at nearby Liverpool Street and Whitechapel.
The full planning application (necessary to change the use of Aldgate Tower’s 8th floor from office use only to a mix of offices and courtrooms) can be found here. It contains notably the proposed floor plan of the UPC, which should be organized around four courtrooms and 14 meeting rooms/office spaces. The IPO’s covering letter to Tower Hamlet also indicates that the installation of the UPC will be followed by the creation of 10 permanent jobs by the IPO.
Has Spain changed its mind about the Unitary patent package since its actions were dismissed by the CJEU? According to the Confederation of Employers and Industries of Spain, it has not and the Spanish industry is much better off outside the system…
A few weeks after Spain’s actions were dismissed by the ECJ, the Kluwer Patent Blog publishes an interview of the Confederation of Employers and Industries of Spain (CEOE), in which the Confederation explains why they strongly support Spain’s government’s opposition to the Unified Patent Court and the Unitary Patent and why they wish to remain out of the UPC Agreement.
It appears unambiguously that the CEOE believes that “the UPC Agreement will not be beneficial to most EU entreprises and will be very detrimental to SMEs” justifying therefore CEOE’s strong opposition to the Unitary Patent package.
The CEOE’s main concern in that respect is the language regime adopted by the UPCA , namely the fact that the unitary patent will have to be filled in English, French or German. For the CEOE “this gives a competitive advantage to enterprises which use one of these languages, to the detriment of enterprises of other Member States.” An example for the CEOE of the unsuitability of the trilingual language regime is the EPO which it considers to be “inefficient and expensive“.
The CEOE further justifies Spain’s position towards the UPC Agreement by arguing that Spanish companies will be able to enjoy all the benefits of the UPCA without the inconvenient as they “will not be obliged to respect in Spain Unitary Patents which have been granted without a Spanish translation with legal effects. Nor will Spanish companies be exposed to lawsuits over products and activities developed in Spain, before a Unified Patent Court in a foreign country and in a foreign language.” The CEOE finally insists that the UPCA, and in particular the court fees, have not been designed with SMEs in mind. The CEOE argues notably that “only big companies will be able to litigate. If SMEs are sued for infringement, they will have to give up, even if the patent of the plaintiff is invalid“.
It appears therefore that there is still a very strong opposition to the Unitary Patent package in Spain and that as a consequence Spain will not in the near future be part of the UPC Agreement.
The UK Intellectual Property Office is organising an interactive event on the UPC Court fees on Tuesday 23rd June in London (registration details here). This event co-hosted with CIFA and the IP Federation will be structured around a panel of experts discussing the key elements of the UPC Court fees. Justice Birss, Kevin Mooney, Alan Johnson and Richard Vary have been confirmed for the panel.
A live and interactive webinar on the UPC Court fees is also announced by the UKIPO, details of which will be published later this month.
The Unified Patent Court has opened its public consultation on the rules on court fees and recoverable costs. The consultation will close on 31st July 2015, and all contributions should be sent to secretariat@unified-patent-court.org.
The consultation document presents two options for a revised Rule 370, a table of fees, a scale of ceilings for recoverable costs and an Explanatory Note. As well as proposing fee levels, the consultation also addresses :
One point to take into consideration however in evaluating the proposed fee structure is that “the fee structure for the Unified Patent Court will comprise fixed fees and, for certain actions, an additional value based fee. The fee levels proposed are the lowest that will enable eventual sustainability of the Court”…
The IPCopy blog highlights a new challenge to the Unitary Patent Agreement brought by the European Software Market Association, a non-for-profit organisation which presents itself as “the voice of independent IT firms, professionals, and consumers”. The ESMA filed a suit before Belgium’s Constitutional Court at the beginning of April.
The ESMA argues that the Unitary Patent violates the Belgian Constitution by “deny(ing) Belgians equality before the law, discriminat(ing) on basis of language, violat(ing) the separation of powers, and (being) an illegal politician manoeuvre by the European Patent Office.”
As Belgium ratified the UPCA in June 2014, it is highly unlikely that this challenge will have any impact on the UPCA or its entry into force. However at a time where all governments should be considering a quick ratification, let’s hope that this does not incite new judicial challenges.
We would love to hear from our readers if they know any other organisation/individuals challenging the UPCA before the Courts.
On Friday 2nd April 2015 as announced on the UPC Blog, the « Union pour la Juridiction Unifiée des Brevets » organised a second mock trial replicating the Unified Patent Court. (Find here our post on the first UPC mock trial organised by the UJUB). It was with great pleasure that the UPC Blog editorial team attended this mock, which once more offered a remarkable insight into the functioning of the UPC and gave substance to its rules of procedure and to the UPCA.
The afternoon was divided into three sessions:
I. The Facts:
This second mock trial opposed a US company “3 Abrasive” (the Claimant) and a French company “La Toilemeri” (the Defendant) over an infringement action of a European patent for “flexible abrasive”.
The patented invention was described in details as “a method for manufacturing an abrasive member comprising a flexible sheet with a multitude of discrete metal protuberance wherein a multitude of copper protuberance are formed on the flexible sheet, nickel protuberances are electrodeposited over the copper protuberances in the presence of particulate abrasive material so that the particulate abrasive material becomes embedded in the nickel deposits and wherein the voids between the protuberances are at least partially filled with resin material, the resin material being selected so as to reduce lateral movement of the nickel deposits.”
This patent is “valid and in force in the Contracting States designated by the Patent, including France, Germany, The Netherlands, United Kingdom and Sweden. All the Designated Contracting States of the Patent have ratified and implemented the UPC Agreement.”
The patent was also the subject of an opposition proceeding in the European Patent Office. In a decision dated 3 September 2014, the opposition division however had rejected the opposition and decided that the patent be maintained as granted. At the time of the mock trial, an appeal was pending before a Board of Appeal.
3 Abrasive alleged that La Toilemeri, the Defendant advertised a product on its website whose characteristics could only be obtained with the method developed in 3 Abrasive’s patent. La Toilemeri, in fact marketed a product described as “an excellent lateral bearing of the abrasive patches, a reinforced securing of the abrasive patches onto the support.”
Following this discovery, 3 Abrasive decided to engage an infringement action before the UPC local division in Paris since no application for opt-out had been made and La Toilemeri is domiciled in France. The Statement of claim was filed on 13 October 2014 in English, which under Art 49(2) UPCA, is one of the official languages of the EPO that the Paris local division accepts.
La Toilemeri filed a defence on 18 December 2014 “challenging any evidence of infringement” and a counter claim for revocation of the Patent. Simultaneously, the Defendant filed an Intervention in the Appeal procedure, which had been initiated at the EPO on 21 November 2014 by a third party. The Defendant, also requested the Court that, under the provisions of Rule 298, the appeal procedure at the EPO be accelerated and to stay its proceedings pending the outcome of the EPO appeal.
The local division in Paris:
The Panel of the local division in Paris comprised three judges: Mr Paul Maier (FR), President, Mrs Sophie Canas (FR) and Mr Colin Birss (UK), who was also appointed in October 2014 as the Judge Rapporteur (following Rule 18).
According to Article 33 (3)(a) UPCA the Court then decided to keep the applications for infringement and revocation together and Mr Kim Finnilä (FI) was subsequently allocated to the panel as technically qualified judge.
II. Application for preserving evidence and inspection (The application can be seen here p 89 of the binder):
Following La Toilemeri’s statement of defence, in which it insisted that 3 Abrasive did not have any evidence of the alleged reproduction of 3 Abrasive’s method of manufacturing, 3 Abrasive decided to file on 29 December 2014 an application for preserving evidence (Rule 192) with a request of an order for inspection at the premises of La Toilemeri, near Paris.
3 Abrasive also requested the Court to issue this order without hearing the Defendant so as to avoid any risk of the evidence disappearing.
The inspection was granted (the decision of the court can be seen here at page 99 of the binder) and revealed that:
III. Application for provisional measures (The application can be seen here at page 119 of the binder):
After 3 Abrasive spotted that La Toilemeri had announced on its website that it would launch its product at an international exhibition in Paris in May 2015, it applied under rule 206 for provisional measures. La Toilemeri filed observations against this application (which can be seen here at page 142 of the binder).
IV. Judgment of the Court:
While the Court was deliberating the participants were asked to vote, and by a large majority decided that 3 Abrasive should not be granted the provisional measures it was requesting against La Toilemeri. The Court however decided to grant 3 Abrasive the injunction it was requesting.
The slides explaining the technical elements of the case and the relevant UPC articles and rules can be found here.
The UJUB has dedicated a website to this second mock trial on which notably the video of the whole trial can viewed. This will give a great insight into the functioning of the UPC for those who could not attend or stream the trial. You will also find the whole synopsis and the presentation of the different “actors”.
While the EPO is working on a fee structure for the renewal of the Unitary Patent (see our post), the UPC Preparatory Committee discussed at its 8th meeting on 27 February 2015 the court fee structure and consultation document.
According to its website, the UPC now anticipates that this consultation will launch in Spring 2015. The Chairman of the Preparatory Committee is in fact “keen to begin engaging with stakeholder and users and asked the relevant working group co-ordinators to prepare the text to meet this deadline”. The IPCopy reports that “the Fees Consultation Sub-group is working towards a redraft of the court fees consultation document to be released in May. There are apparently a number of inconclusive “key policy points” but there is recognition that they need to seek views as soon as possible.” To this effect, the comments of the Expert Panel -who advises the Chair and working group co-ordinators and met in February 2015- are now being considered by the relevant teams. Thus, if the Select Committee meets its deadline we should thus soon know more about the UPC fees…