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.
So what are the key dates for the UPC for 2014-2015?
Here is a presentation with all the key dates for the UPC for 2014-2015:
[embeddoc url=”http://upcblog.amar.lawwp-content/uploads/2015/01/Key-dates-for-UPC.pdf”]
If you would like to share an update or add a new key dates please contact us by email upcblog@lavoix.eu or by Twitter @UPCBlogLAVOIX !!
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Actavis v Eli Lilly: when the High Court of Justice rules across multiple jurisdictions… Isn’t the need for a Unified Patent Court becoming even more flagrant?
Background of the case and Nature of the claim:
On 15 May 2014, the High Court of Justice in the Patents Court division handed down a significant judgment in Actavis v Eli Lilly, granting a declaration of non-infringement across multiple European jurisdictions in respect of the UK, French, Italian and Spanish designations of a European Patent. Actavis in fact sought a declaration that their proposed launch of a generic pemetrexed product to compete with Lilly’s cancer treatment product Alimta, would not infringe Lilly’s EP1313508 covering pemetrexed disodium. Actavis had indicated to Lilly that they would seek marketing approval for their competing product by reference to Alimta and were seeking to clear the path of any obstacles that would prevent this. Lilly counterclaimed for threatened infringement in relation to the UK designation of the patent.
Before going more in-depth into this decision it is important to look at the decisions for the same claim rendered on 27 November 2012 and 21 May 2013 by respectively the Patent Court and the Court of Appeal which laid the legal basis of the 2014 decision.
In 2012 Arnold J passed a judgment on three procedural issues relating to the service of the claim (§ 35) and the question of the exercise of the Court’s jurisdiction on the ground of forum conveniens. The question before the court was thus whether the UK Court could determine all five claims together, or whether they should be tried separately in their respective national courts.
It is important to highlight three essential points of that judgment.
Whence, Arnold J states at paragraph 89 that “If (…) one considers the reasons given in Lucasfilm v Ainsworth at [104]-[110] by Lord Walker of Gestingthorpe JSC and Lord Collins of Mapesbury (…) for holding that there is no subject matter limitation on jurisdiction, in my opinion they are equally relevant to the operation of the forum non conveniens doctrine.” Arnold J in fact considers that if patents are no different to copyrights for the purpose of justiciability, they should then be treated no differently for the purposes of forum non conveniens –when validity is not an issue.
The forum non conveniens doctrine allows a court to dismiss a civil action where an appropriate and more convenient alternative forum exists in which to try the action. The appropriate forum is the one in which the case may most suitably be tried in the interests of all the parties and the ends of justice. Permission to serve the proceedings outside the jurisdiction will then only be granted if the court is satisfied that the other jurisdiction is the proper place (or forum conveniens) in which to bring the claim.
Actavis argued of course that England was the appropriate place for a trial as “first, it would mean that the case would be conducted by one team of lawyers on each side using one set of factual and expert witnesses (although in the present case it appears unlikely that there will be any need for factual witnesses), thereby saving costs for both sides. Secondly, it would enable the case to be determined by reference to one law, namely English law, if Lilly chose not to raise any issue as to foreign law, thereby saving even more costs. Thirdly, even if different laws were applied, it would mean that one court (and one court on appeal) would determine all five claims, thereby eliminating the prospect of inconsistent decisions unless they really were mandated by the different national laws’ approaches to Article 69 EPC and the Protocol.” Arnold J found these arguments compelling, rejected Lilly’s position as to the cost of the defense (see §98) and declared that England was the proper forum to hear the five claims.
Following this decision Lilly lodged an appeal (which can be read here), dismissed by the Court of Appeal on 21 May 2013. It is nonetheless important to note that the Court only considered the issues of procedure and service of the claim. The substantial issue -whether “the judge ought to have granted a stay on the grounds of forum non conveniens”- was not looked into by the Court. Kitchin LJ in fact after upholding the first issue (whether the judge was right to hold that Lilly’s solicitors, Hogan Lovells, agreed to accept service of proceedings in the first action), formed the view that this conclusion was dispositive of the whole appeal.
The Judgment passed in May 2014 is the last chapter -to date- of the Actavis v Lilly saga, and seems to bring a definite if unsatisfactory answer to the question of the justiciability of the infringement of the foreign counterparts of a European Patent.
The substantive issue and the claim for declaration of non-infringement:
Concerning the substantive issue, Arnold J found that “neither pemetrexed diacid nor pemetrexed dipotassium nor pemetrexed ditromethamine falls within the scope of the claims 1 to 12 of the UK, French, Italian, or Spanish designations of the patent”. These claims can be read here. Hence, the dealings in permetrexed diacid, dipotassium and ditromethamine by Actavis do not constitute direct or indirect infringement of the UK, French, Italian or Spanish designations of the Patent.
Arnold J then proceeded to the analysis of the law applicable to the declaration of non-infringement (“DNI”) claims. The Judge made an important difference between the law applicable to the question of whether Actavis’ proposed acts infringed each non-UK designation of the Patent and the law applicable to the DNI claim made by Actavis. Concerning the first question, or whether Actavis’ proposed acts infringed each non-UK designation of the Patent, Arnold J considered that lex loci protectionis, the substantive patent law of the relevant country, applied. As for the second question, i.e. which law should be applied to the DNI claim, the Judge had to decide between Actavis’ contention that lex fori -i.e. the law of the jurisdiction in which relief is pursued- should apply, and Lilly’s contention that on the contrary lex loci protectionis was relevant. Two interpretations of the nature of the rules governing the declaration of non-infringement were opposing each other. Actavis in fact contended that these rules should be considered as part of evidence and procedure and should thus be governed by article 1(3), which excludes these areas from the scope of the Rome II Regulations at the benefit of national jurisdictions. Article 1(3) hence states: “
“This Regulation shall not apply to evidence and procedure (…)”
Lilly on the contrary argued that a declaration of non-infringement is a remedy in the sense of article 15 (c) and as such should be within the scope of the Regulation. Article 15 (c) in fact states:
“The Law applicable to non-contractual obligations under this Regulation shall govern in particular:
(…)
(c) the existence, the nature and the assessment of damage or the remedy claimed”
After considering the interpretation of the Rome II Regulation Arnold J found that the law that applied to the DNI claim should follow lex fori. In fact he did not accept that a DNI is a remedy in the sense of article 15(c) and “even if a DNI is a remedy, and even if it is a remedy within Article 15(c), it seems to me that Article 15(c) should be interpreted as only having the effect that the question of principle as to whether a DNI is available at all is a matter for the law applicable to the non-contractual obligation.” The judge then concluded “the rules presently in issue (the rules for obtaining negative declaratory relief) are matters of procedure within article 1(3) and are not governed by the law applicable to non-contractual obligation in accordance with Article 15”. As a result the rules determining the obtaining of a DNI fall outside of the scope of the Rome II Regulation. Thus, as explained by Arnold J in paragraph 210 “it is common ground that if Actavis are right (…) the question of the applicable law is to be determined by English private international law and that under English private international law, the applicable law is the lex fori, because English law regards the rules for obtaining declaratory relief as being procedural”. The rules governing the claim for a declaration of non-infringement thus follow English Law.
This in consequence explains why Arnold J considers that Actavis are entitled to a DNI in respect of the UK, and foreign designations of the European Patent. The declaration of non-infringement irrelevantly of the Patent designation being in fact governed by the lex fori, or English Law.
Declaration of non-infringement in respect of the UK designation applying English Law:
Once the appropriate law applying to the DNI identified, Arnold J pursued by deciding if the grant of a DNI to Actavis would meet the necessary criteria identified by English Law.
Following Messier – Dowty, a DNI can only be granted if it serves a useful purpose. This criterion will be met if the “claimant has a real commercial interest in the negative declaratory relief sought or a real commercial reason for it to be granted”. Arnold J found that Actavis should be granted a DNI in respect of the UK Patent designation as “Lilly does not seriously dispute that, if Actavis establish that dealings in their products would not amount to an infringement of the UK designation of the Patent, then Actavis should be granted a DNI in respect of that designation pursuant to the inherent jurisdiction of the Court”.
DNI in respect of the French, Italian, and Spanish designations applying English Law:
After establishing that the law applicable to the question of whether Actavis were entitled to a DNI in respect of the French, Italian, and Spanish designations of the patent was English law, Arnold J found that Actavis should be granted declarations of non-infringement in respect of those designations pursuant to the jurisdiction of the High Court of Justice of England and Wales, Actavis having demonstrated that they have a real commercial interest in obtaining DNIs and that these declarations would serve a useful purpose .
DNI in respect of the French, Italian and Spanish designations applying respectively French, Italian, and Spanish laws:
Arnold J pursued his judgment by looking at the declarations of non-infringement in respect of the French, Italian, and Spanish designations applying French, Italian and Spanish law “in case (I am) is wrong about the applicable law” on “the assumption that the relevant law is the law applicable to the non-contractual obligation”.
Finally, Arnold J helped in his appreciation of foreign laws by experts’ opinions on the granting of DNI under these jurisdictions, decided that “even if French, Italian, and Spanish law is the applicable law respectively, Actavis are entitled to a DNI in respect of the French, Italian, and Spanish designations of the Patent”.
In Conclusion:
This decision is remarkable in many respects. First, it is a superb example of legal craftsmanship. Second , Arnold J innovative reasoning could inspire litigants in the UK and in other EU countries, pending the entry into force of the Unitary Patent system. We believe that although the reasoning applied to a situation where a party was seeking a declaration of non-infringement prior to marketing potentially infringing products, thus not risking a patent infringement counterclaim, it could nevertheless be extended to infringement claims in cases where nullity counterclaims are not available, such as in cases litigated before the German patent district courts (Landgericht). Third, this decision is a good illustration of the inefficiency of the existing system. Of course the solution is elegant and sophisticated but in the end, this is merely a “patch” aimed at fixing, albeit imperfectly, an inherent error in the European Patent system. It is time to move from error correction and bug fixes to a brand new release of the European patent system. No doubt that the patent lawyers will find many new opportunities to demonstrate their creativity in this new system, for a better result.
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:
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.
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:
Financial aspects:
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 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.
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.
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.
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.
The Unified Patent Court Preparatory Committee and Select Committee recently released an explanatory note on the “Enhanced European Patent System” detailing the purpose of the future Unified Patent Court and Unitary Patent and the key points on how this major patent reform will articulate itself with the existing European and National patents and existing jurisdictions.
The UPC Blog has extensively posted on the Unified Patent Court competence and procedure, on the nature of the unitary effect and the general overview and background of both the UPC (Unified Patent Court) and the UP (Unitary Patent). It is however the first time that the committees (see our posts on the Select committee and the Preparatory Committee) involved in the setting up of the UPC release an explanatory note. It is thus the first time that clarifications rather than interpretations are made about the UPC agreement. This post will focus on three key points of the UPC explanatory note, which bring some explanations to the cacophony of information published so far, without nonetheless answering all the questions.
Before looking at these three substantial points, it is important to start with the reassertion from the Select and Preparatory Committees that the Unitary Patent directly derives entirely from the European patent, which provides the shell onto which the unitary effect hooks up. So to obtain a Unitary patent an applicant must first apply for a European patent at the European Patent Organisation, which will handle the application in accordance with the European Convention. It is only after grant that the proprietor of a European patent will have the opportunity to apply for unitary effect. However if for a European patent it is necessary for the patent holder to validate the patent in each Member state where protection is required, for a unitary patent a single request will give protection in 25 Member States of the European union. (More information on the unitary effect here)
The rest of the explanatory note is divided between the UPC and UP, and deals with important questions such as the geographical extension, the general competence of the UPC and the transitional period. The UPC Blog by Lavoix raised in previous posts the problems of legal uncertainty attached to these three topics, we will thus look here at the response of the Select and preparatory Committees. (See Discussion posts on “Opt-out and legal certainty” “The impact of Article 83 UPCA on the applicable law” and “UPC and Infringement actions”)
The Geographical extension of the Unitary Patent:
The unitary effect of a European patent will cover the territories of the contracting member states that have ratified the UPC Agreement at the date of the registration of the unitary effect of the individual patent. The explanatory note however makes clear that the geographical perimeter of validity of the unitary effect will not extend following the progressive ratification of the UPC Agreement after the registration. Rather, it will stay the same until all the contracting member states ratify the UPC Agreement. It is only then that European patents registered thereafter will enjoy unitary effect in all participating member states. As for Spain, Italy and Croatia which are not participating in the UP and Poland which is participating but has not signed yet the UPC Agreement, it will be possible for the proprietor of a European patent with unitary effect to choose to validate the patent as a classical European patent. In addition, it will also be possible to validate the same patent as a European Patent in the ten contracting states of the European Patent Organisation that are not EU Member States. (For more information on the contracting member states and Italy and Spain’s positions).
The UPC general competence:
On the general competence of the UPC, the explanatory note makes clear that the UPC has exclusive competence “in respect of civil litigation on matters relating to classical European patents, European patents with unitary effect, supplementary protection certificates issued for a product covered by such a patent and European patent applications”. The UPC will not however have any competence for national patents or supplementary protection certificates granted for a national patent (see our post on supplementary protection patents).
The UPC’s rulings will have effect in the territory of the contracting member states that will have ratified the UPC Agreement. The exclusive competence of the UPC will also apply to the decisions of the European Patent Office in “carrying out the tasks of administering the Unitary patent set out in the Unitary patent regulations”.
The Transitional period: (For background information on the transitional period see here)
The UPC Agreement provides for European patents a period of seven years, renewable for another seven years, during which they will co-exist with UP’s. However, as it is made clear in the explanatory note, the transitional rules will not apply for European Patents with unitary effect. The transitional period will only apply to European patents or Supplementary Protection Certificates issued for products protected by European patents. For those European patents, the competent forum during the transitional period will be either the UPC or the existing national courts. So unless an action has already been brought before the UPC, actions for infringement or for revocation concerning European patents or for a Supplementary Protection Certificate issued for a product protected by a European patent may thus still be brought before national courts.
The Opt-out is, too, detailed and explained. Hence, “during the transitional period, a proprietor –or an applicant for- a European patent granted or applied for prior to the end of the transitional period or a SPC issued for a product protected by such a patent will also have the possibility to opt out the patent/application/SPC, from the jurisdiction of the UPC unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into register. It will be possible to withdraw such an opt-out at any time. There will be no possibility to opt-out European patents with unitary effect.” In respect of the opt-out the Select and Preparatory Committees list three benefits of the UPC justifying not opting-out: “a unified jurisprudence resulting in increased predictability and the avoidance of panel litigation; judgments (injunctions, damages) with effect in 25 Member states of the EU; the expectation of speedier procedures than in many of the individual Member States”.
It is important to observe however that this explanatory note does not answer central questions such as the possible dual competence between the UPC and national jurisdiction under articles 32 (1) and 83 (1) of the UPC Agreement, the types of actions that would stop a patent proprietor to opt-out or the risk of lis pendens. The UPC Blog will deal with each of these issues in posts to come.
You can of course look at the UPCA here and the draft rules of procedures here.
June has seen two new ratifications of the Unified Patent court Agreement by Sweden and Belgium, respectively on 05th and 06th June 2014.
Sweden had already announced earlier this year that it will form a regional division of the UPC together with Lithuania, Latvia and Estonia, which explains this quick ratification. The Nordic-Baltic court will operate in english only.
You can find a summary of the ratification progress here and on the site of the European Commission, as well as a map of the countries which have already ratified here.