Tag: UPC Procedure

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Starting proceedings before the UPC

What should you know about the Unitary Patent?

What should the plaintiff lodge to start proceedings?

Depending on the type of action to be started, the plaintiff shall lodge either:

  • a Statement of claim;
  • a Statement for revocation;
  • a Statement for a declaration of non-infringement;
  • an Application for appropriate compensation under Article 8.1 of Regulation 1257/2012;
  • an Application to annul or alter a decision of the European Patent Office;
  • an Application for obtaining provisional and protective measures and injunctions.

Where should the plaintiff lodge her statement/application?

For First Instance proceedings:

A plaintiff shall lodge her Statement or Application at a sub-registry of the UPC’s Registry. Sub-registries will be set up in all local or regional divisions as well as in central divisions.

The plaintiff may under Article 33 of the UPC Agreement, choose between several divisions . The UPC Agreement in fact provides for the plaintiff to lodge her application either before the local division where the actual or threatened infringement has occurred or the local division where the defendant has its place of residence or place of business. The plaintiff must in any way lodge its application in accordance with the competence of the divisions.

For Appeal proceedings:

Appellants must lodge an Application for leave to appeal against an order of the Court of First Instance .

Appellants must lodge a Statement of appeal to appeal against a decision of the UPC’s Court of First Instance

Appellants must lodge both at the UPC’s Registry located in Luxembourg.

How should the plaintiff lodge the statement/application?

An electronic filing system will be set up to enable plaintiffs to lodge the Statement or Application electronically at the UPC’s Registry.

This electronic filing will be available for First Instance and Appeal level.

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Want to lodge a statement of claim with the UPC? Try its case management system prototype…

The UPC has revealed the prototype of its case management system. It is based on the UPC draft rules of Procedure 13-28, allowing testers to file an infringement claim. Feedback from testers will be used over October and November 2014 to help the UPC to continue configuration of its case management system and evaluate its procurement process.

The purpose of the prototype is to test the viability of a cloud-based, configured system for the UPC, where data is stored by a supplier and can be accessed securely from any location.

This trial comes after workshops organized by the UPC with patent lawyers throughout Europe which highlighted three recurrent issues:

“Roles-Based Access – There are strict legal requirements for protecting access to certain patent information and Lawyers want to be able to control access.
Usability – Several Lawyers demonstrated current eFiling systems across Europe and highlighted usability issues; we want to use what is good from other systems and we don’t want to make the same mistakes.
Ease Document Management – Identifying documents and searching content were key to users’ working patterns; being able to quickly identify the type of document and current status.” (http://prototype.unified-patent-court.org/selfservice/web/index.html)

The prototype e-Filing/case management can be accessed here.

By registering to the website you will be able to lodge a fictitious statement of claim divided into the following twenty-four sections:

  1. Claimant Representative
  2. Claimant details
  3. Claimant Contact Details
  4. Individual Claimant Address Details
  5. Company Claimant Registered Office Details
  6. Company Claimant Contact Address Details
  7. Please enter your Patent Number
  8. Is the Claimant the proprietor of the Patent
  9. Are there any additional proprietors?
  10. Patent Proprietor
  11. Does your claim involve more than one patent?
  12. Does the claimant have the proprietors permission to submit this claim
  13. Please upload a document detailing permission(s) to proceed with this claim
  14. Add further Patents
  15. Pending proceedings
  16. Details of Claim
  17. Defendant
  18. Defendant Contact Details
  19. Individual Defendant Address Details
  20. Company Defendant Registered Address Details
  21. Do you know who is representing the Defendant?
  22. Case hearing
  23. Submit
  24. Payment

The prototype offers of course the opportunity to give feedback by clicking on the “Send Feedback” tab at the bottom of your statement of claim screen.

The UPC is planning a full, open procurement process, with publication of the procurement notice in the Official Journal of the European Union in November 2014 and contract award in summer 2015.

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UPC –Appeals:

(A) Appeals on Infringement and Validity:

The UPC’s Court of Appeal may hear appeals against separate decisions on the merits in infringement proceedings and in validity proceedings together, under Rule 220.3 of the draft Rules of Procedure of the UPC.

 

(B) Proceedings and languages:

In case of bifurcation at first instance, the language of proceedings before the local or regional division may not be the same as the language of proceedings before the central division. The language of proceedings before the Court of Appeal will however be the language of proceedings of the main action, namely the infringement action heard by the local or regional division. In such a case, the judge-rapporteur may order the appellant to lodge translations into the language of the proceedings before the Court of Appeal of written pleadings and other documents lodged by the parties before the Court of First Instance and decisions or orders of the Court of First Instance (Rule 232.1 of the draft Rules of Procedure of the UPC).

 

(C) Appeals on points of Law and Matters of facts:

The appeal will neither be a complete rehearing of the first instance case nor will it be strictly limited to points of law. An appeal may be based on points of law and matters of fact (Article 73.3 of the UPC Agreement).

 

(D) New facts and arguments on Appeal:

A new fact or new evidence may only be introduced at the appeal stage if a party could not reasonably have been expected to submit it during proceedings at first instance (Article 73.4 of the UPC Agreement).

The UPC’s Rules of Procedure shall lay down further details relating to new facts and evidence.

In Rule 222.2 of the draft Rules of Procedure of the UPC, it is provided that requests, facts and evidence, which have not been submitted by a party during proceedings at First Instance may be disregarded by the Court of Appeal. When exercising this discretion, the Court of Appeal shall in particular take into account:

  • whether a party seeking to lodge new submissions is able to justify that the new submissions could not reasonably have been made during proceedings before the Court of First Instance,
  • whether the new submissions are highly relevant for the decision on the appeal,
  • the position of the other party regarding the lodging of the new submissions.

 

 

(E) Allowed appeals:

Under Article 73 of the UPC Agreement and Rule 220.1 of the draft Rules of Procedure of the UPC[6], the decisions of the Court of First Instance which may be appealed as of right are (1) final decisions, (2) decisions which terminate proceedings as regards one of the parties and (3) decisions or orders referred to in the following Articles of the UPC Agreement:

  • Article 49.5: decision of the President of the Court of First Instance to use the language in which the patent was granted as language of proceedings, at the request of one party.
  • Article 59: order to produce evidence and to communicate banking, financial or commercial documents.
  • Article 60: order to preserve evidence and to inspect premises.
  • Article 61: freezing order.
  • Article 62: order granting provisional and protective measures, including injunctions, seizure and delivery up.
  • Article 67: order to communicate information.

 

Other orders of the UPC may only be appealed together with the appeal against the final decision of the Court of First Instance, or where the Court grants leave to appeal (Article 73.2(b) of the UPC Agreement).

 

 

(F) Permission to Appeal:

Under Article 73.2(b)(ii) of the UPC Agreement, “the Court grants leave to appeal”. The Court is the UPC as such which means that the Court of First Instance as well as the Court of Appeal will be able to give permission to appeal.

 

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The UPC- Provisional and Protective measures and Bifurcation:

 

I. Provisional and Protective measures:

 

(A) The provisional measures granted by the UPC:

The UPC will have the power to:

  • order the seizure or delivery up of products suspected of infringing a patent, as well as the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of the bank accounts and of other assets of the alleged infringer (Article 62.3 of the UPC Agreement).

 

 

(B) Provisional measures, strength of the plaintiff and other factors:

Before granting an injunction, the UPC will weigh up the interests of the parties and in particular take into account the potential harm for either of the parties resulting from the granting or the refusal of the injunction as stated in Article 62.2 of the UPC Agreement and Rule 211.3 of the draft Rules of Procedure of the UPC.

Factors which the UPC shall take into account under Rule 209 of the draft Rules of Procedure of the UPC include:

  • the outcome of any opposition  before the European Patent Office or any other proceedings before a national court,
  • the urgency of the case,
  • whether the defendant has been heard,
  • whether any protective letter has been filed.

 

The UPC may also require the party applying for an injunction to provide reasonable evidence in order to satisfy the UPC with a sufficient degree of certainty that the party is the right holder and that his right is being infringed, or that such infringement is imminent under Article 62.4 of the UPC Agreement.

 

(C) Interim Measures and Exclusive Jurisdiction:

The UPC is a court common to the Contracting Member States as stated in Article 1.2 of the UPC Agreement, in which it has exclusive jurisdiction. However, decisions and orders -like for example an order to preserve evidence- can under certain circumstances be enforced outside the territories of the Contracting Member States in accordance with Regulation 1215/2012.

 

(D) Interim measures without involving the defendant:

Under Article 62.5 of the UPC Agreement, where necessary to avoid any delay which could cause irreparable harm to the patent proprietor, or where there is a demonstrable risk of evidence being destroyed, the UPC will have the power to grant – without hearing the defendant – provisional and protective measures (injunctions, seizure or delivery up).

Similarly, the UPC may order measures to preserve evidence or inspect premises and grant freezing orders without hearing the defendant (Articles 60.5 and 61.2 of the UPC Agreement; and Rule 212 of the draft Rules of Procedure of the UPC).

 

(E) Protective Letter:

A protective letter may be filed at the UPC, typically where a person considers that there is a risk that an application for provisional measures against him as a defendant be lodged before the UPC (Rule 207 of the draft Rules of Procedure of the UPC).

It is envisaged that a protective letter may be filed at any time. It may contain facts, evidence and arguments of law and set out the reasons why any future application for provisional measures should be rejected by the UPC. It is furthermore envisaged that a fee should be paid. The protective letter would have effect for a period of 6 months (extendable upon payment of an extension fee). It would not be made public.

 

 

II. Bifurcation:

 

(A) Infringement and Validity actions:

If an infringement action is initiated before the central division of the UPC and a counterclaim for invalidity is brought before the central division, both infringement and validity will be dealt with together.

If an infringement action is initiated before a local or regional division of the UPC and a counterclaim for invalidity of the patent is brought before the local or regional division concerned, Article 33.3 of the UPC Agreement foresees different scenarios:

  • The local or regional division concerned may decide to proceed both with the infringement action and the counterclaim for invalidity together (in this case it has to request the allocation of a technically qualified judge with qualifications and experience in the field of technology concerned);
  • it may alternatively decide to refer the counterclaim for invalidity for decision to the central division and, depending on the circumstances of the case, either suspend or proceed with the infringement action (Rule 37.4 of the draft Rules of Procedure of the UPC provides further guidance to the local or regional division on the criteria to consider when deciding whether to suspend or to proceed with the infringement action);
  • with the agreement of the parties, the local or regional division concerned may also decide to refer both the infringement action and the counterclaim for invalidity to the central division, where they will be dealt with together.

 

(B) UPC’s discretion as to hear infringement and validity together:

Article 33.3 of the UPC Agreement leaves it to the discretion of the local or regional division concerned to decide whether to proceed with the infringement action and the counterclaim for invalidity together or whether to refer the counterclaim for decision to the central division.

In the latter case it is also left to the discretion of the division concerned whether to proceed with the infringement action or whether to stay the infringement proceedings and to wait for the counterclaim for invalidity to be decided on by the central division.

It is expected that the division concerned will take these decisions taking into account all relevant circumstances of the case, including grounds of fairness to the parties.

 

 

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UPC Procedure and Languages:

(A) Language of proceedings in the UPC:

In the Court of First Instance, the official language will be the official language or one of the official languages of the Contracting Member State hosting the local division or the official language(s) designated by the Contracting Member States sharing a regional division. The language of proceedings in the central division shall be the language in which the patent was granted. The language of proceedings before the Court of Appeal shall be the language of proceedings before the Court of First Instance (Article 49 and 50 of the UPC Agreement).

However there are exceptions to the main rule:

  • The Contracting Member States may designate one or more of the official languages of the European Patent Office in addition or instead of their official language as the language of proceedings of their local or regional division.
  • The parties may agree to use the language of the patent (applies also in the Court of Appeal).
  • With the Agreement of the parties the competent panel of the Court of First Instance may decide to use the language of the patent.
  • At the request of one of the parties and after having heard the other parties and the competent panel the President of the Court of First Instance may decide to use the language of the patent.

 

 

(B) Translation and Costs:

Every document will normally need to be translated into the language of proceedings. The party submitting the document will bear the costs for the translation. This will however be a cost that can be recuperated from the losing party (Rule 7 of the draft Rules of Procedure of the UPC). Any Panel of the Court of First Instance and the Court of Appeal may, to the extent deemed appropriate, dispense with translation requirements (Article 51.1 of the UPC Agreement).

Under certain circumstances when an infringement action is brought before the central division of the Court of First Instance a defendant having its residence or place of business in a Contracting Member State shall have the right to obtain translations of relevant documents in the language of the Member State of residence or place of business. The costs shall be covered by the plaintiff (Article 51.3 of the UPC Agreement).

When the President of the Court of First Instance (at the request of one of the parties and after having heard the other parties and the competent panel) has decided to use the language in which the patent was granted as language of proceedings the President shall also assess the need for specific translation and interpretation arrangements (Article 49.5 of the UPC Agreement).

 

(C) Translations for the Court of Appeal:

If the language of the proceedings before the Court of Appeal is not the language of the proceedings before the Court of First Instance. Then the judge-rapporteur may order the appellant to lodge translations into the language of the proceedings before the Court of Appeal of written pleadings and other documents lodged by the parties as well as decisions or orders of the Court of First Instance. The costs shall be covered by the appellant (Rule 232 of the draft Rules of Procedure of the UPC).

 

(D) Interpretation to assist parties at the oral proceedings:

If the judge-rapporteur decides that simultaneous interpretation is appropriate then the cost is covered by the UPC. In the event that the judge-rapporteur refuses to order simultaneous interpretation the parties may request arrangements to be made, so far as practically possible, for simultaneous interpretation at their cost (Article 51.2 of the UPC Agreement and Rule 109 of the draft Rules of Procedure of the UPC).

 

 

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UPC Procedure and Parties to Proceedings and Representation:

(A) Licensees:

The holder of an exclusive licence is entitled to bring actions before the UPC under the same circumstances as the patent proprietor, except where the licensing agreement provides otherwise. Under Article 47.2 of the UPC Agreement, the patent proprietor must be given prior notice. A holder of a non-exclusive licence is on the other hand not entitled to bring actions before the UPC, unless the patent proprietor is given prior notice and in so far as expressly permitted by the licence agreement (Article 47.3 of the UPC Agreement).

Moreover, in any action brought by a licensee, the patent proprietor shall be entitled to join the action (Article 47.4 of the UPC Agreement).

 

(B) Representation of third parties before the UPC:

Under Article 48 of the UPC Agreement, representation before the UPC will be mandatory and parties will have to represented by either:

  • a lawyer authorised to practise before a court of a Contracting Member State; or

 

  • a European Patent Attorney who has acquired additional appropriate qualifications such as a European Patent Litigation Certificate. However, the issue of how a European Patent Attorney will obtain an independent right to represent clients at the UPC still has to be considered by the Contracting Member states and the Preparatory Committee.

 

 

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UPC Procedure:

 

!! The Rules of Procedure for the Unitary Patent Court are yet to be finalized and adopted by the UPC Preparatory Committee  !!

 

I. Start of proceedings (written procedure):

(A) Initial pleading and what needs to be submitted to the UPC:

Depending on the type of action to be started, the draft Rules of Procedure of the UPC lays down what the corresponding Statement or Application shall contain:

  • a Statement of claim shall contain the items listed in Rule 13;

 

  • a Statement for revocation shall contain the items listed in Rule 45;

 

  • a Statement for a declaration of non-infringement shall contain the items listed in Rule 60;

 

  • an Application for appropriate compensation under Article 8.1 of Regulation 1257/2012 shall contain the items listed in Rule 80;

 

  • an Application to annul or alter a decision of the European Patent Office shall contain the items listed in Rule 88;

 

  • an Application for obtaining provisional and protective measures and injunctions shall contain the items listed in Rules 192 and 206.

 

 

(B) Starting proceedings before the UPC:

Depending on the type of action which is to be started, the plaintiff shall lodge either:

  • a Statement of claim (infringement action)

 

  • a Statement for revocation (revocation action)

 

  • a Statement for a declaration of non-infringement

 

 

 

Similarly, an action for obtaining provisional and protective measures and injunctions will start when a plaintiff lodges an Application under Rules 192 and 206 of the draft Rules of Procedure of the UPC.

 

(C) Registration of the plaintiff’s proceedings:

A plaintiff shall lodge the Statement or Application at a sub-registry of the UPC’s Registry. A sub-registry will be set up at all local or regional divisions as well as at the central division’s seat and sections (Article 10.3 of the UPC Agreement). The plaintiff may in many instances choose between several divisions, in accordance with the competence of the divisions under Article 33 of the UPC Agreement.

It is currently planned that an electronic filing system will be set up so that a plaintiff will be able to lodge the statement or Application electronically at the UPC’s Registry (Rule 4 of the draft Rules of Procedure of the UPC).

A Statement of appeal against a decision of the UPC’s Court of First Instance – or an Application for leave to appeal against an order of the Court of First Instance – shall be lodged at the UPC’s Registry in Luxembourg. Electronic filing procedures are also planned for the appeal stage.

 

 

 

II. Interim Measures procedure:

(A) End of the Written procedure:

The aim of the Interim procedure is to make all necessary preparations for the oral hearing (Rule 101 of the draft Rules of Procedure of the UPC). The judge-rapporteur shall be responsible for the Interim Procedure and may in particular – where necessary, and subject to the mandate of the panel – hold one or more Interim conferences with the parties. In addition, the judge-rapporteur shall explore with the parties the possibility for a settlement, including through mediation, and/or arbitration, by using the facilities of the Patent mediation and arbitration centre (Article 52.2 of the UPC Agreement).

Further provisions in the draft Rules of Procedure of the UPC lay down that the judge-rapporteur may order parties to provide further clarification on specific points, answer specific questions, produce evidence or lodge specific documents including each party’s summary of the orders sought at the Interim conference (Rule 103 of the draft Rules of Procedure of the UPC).

 

(B) Cross examination of witnesses in Interim procedure:

Only preparatory discussions with witnesses and experts may take place during the Interim procedure (Rule 104(f) of the draft Rules of Procedure of the UPC). These preparatory discussions shall take place in the presence of the parties with a view to properly preparing for the oral hearing.

 

(C) UPC compliance penalty:

The UPC has a general power to impose a penalty on a party which does not comply with an order of the UPC (Article 82.4 UPC Agreement; Rule 354.5 of the draft Rules of Procedure of the UPC). The penalty shall be proportionate to the importance of the order to be enforced.

In the Interim procedure, the judge-rapporteur may order the parties to provide additional information (Rule 103 of the draft Rules of Procedure of the UPC). During an Interim hearing, the judge-rapporteur may issue orders regarding the production of further pleadings and documents, experts, experiments, inspections or further written evidence (Rule 105(e) of the draft Rules of Procedure of the UPC).

 

 

III. Oral procedure :

(A) Witness cross-examination :

Witnesses will only be heard during the oral procedure if ordered during the Interim procedure (Rule 112.2(b) of the draft Rules of Procedure of the UPC). If ordered, witnesses and experts may be heard – always under the control of the presiding judge – either during a separate hearing before the panel or during the oral hearing (Rules 104(h) and 112.3 of the draft Rules of Procedure of the UPC). Where a witness or expert is heard during the oral hearing, the presiding judge and the judges of the panel may put questions to the witness or expert. The parties may also – under the control of the presiding judge – put questions to the witness or expert (Rule 112.3 and .4 of the draft Rules of Procedure of the UPC).

 

(B) UPC’s decision:

Only in exceptional cases may the UPC give its decision immediately after the closure of the oral hearing. In such cases the written reasoning will be provided on a subsequent date.

Normally, the UPC’s decisions on the merits will be given after the closure of the oral hearing, as soon as possible. The stated objective is that decisions are issued in writing within six weeks of the oral hearing (Rule 118.7 of the draft Rules of Procedure of the UPC).

 

IV. Evidence:

Any means of evidence may be relied on in the UPC proceedings. In addition, evidence may be obtained by hearing witnesses and party or court experts. The court may order a party to the proceedings to produce evidence. Such an order may be requested by a party which submits reasonable and plausible evidence to support its claims and specifies the evidence which is in the control of the other party. If a party fails to comply with an order to produce evidence this will be taken into account in the court’s decision.

The UPC may issue orders to preserve evidence, such as the inspection of physical objects or premises and the taking of samples. It may also order the seizure of allegedly infringing goods and the materials for producing such goods. Freezing orders are possible under certain circumstances, and may be issued without hearing the defendant.