Tag: UPC

Posted on

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.

 

 

Posted on

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).

 

 

Posted on

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.

 

 

Posted on

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.

 

 

Posted on

The UPC General Competence:

Supplementary Protection Certificate

 

I. Sources of the Law and substantive Patent Law:

(A) The UPC’s sources of Law:

As stated in Article 24 of the UPC Agreement, the UPC will base its decisions on Union law, The UPC Agreement, the European Patent Convention  (EPC), other international agreements applicable to patents and binding on all the Contracting Member States and national law.

(B) Determination by the UPC of prior national rights and prior user rights:

Prior user rights will, pursuant to Article 28 of the UPC Agreement, be governed by national law. Anyone who has prior user rights in a Contracting Member State with regard to a corresponding national patent will enjoy the same rights in that Contracting Member state in respect of a European patent or a European patent with unitary effect.

 

II. General Competence:

(A) The different types of actions the UPC will be competent to hear:

The UPC will, as a general rule, have exclusive competence in respect of civil litigation on matters relating to European patents, European patents with unitary effect, and supplementary protection certificates issued for a product covered by the UPU and European Patent. The exclusive competence is however subject to exceptions during the transitional period.

The area of exclusive competence of the UPC is specified in Article 32 of the UPC Agreement. Among other things it includes actions for actual or threatened infringements and related defenses, actions for declaration of non-infringement, actions for provisional and protective measures and injunctions, actions for revocation and counterclaims for revocation.

The UPC will also have exclusive competence in respect of actions concerning decisions of the European Patent Office in carrying out the tasks set out in Regulation 1257/2012 on Unitary Patent Protection. National courts will remain competent for actions that do not come within the exclusive competence of the UPC.

 

(B) The UPC Court of First Instance’s competence:

Article 33 of the UPC Agreement contains a detailed description of the competence of the divisions of the UPC’s Court of First Instance. The court of first instance will thus be competent for:

  • Actions for declarations of non-infringement. The central division will however suspend the case if an infringement action related to the same patent between the same parties is initiated before a local or regional division.
  • Actions for revocation of a patent (including counterclaims for revocation referred by a local/regional division).
  • Actions for the grant or revocation of a compulsory license.
  • Actions on compensation for licenses.
  • Actions against defendants domiciled outside the territory of the contracting state.

 

C/ The UPC local/regional division:

The UPC local and regional divisions will be competent to hear:

  • Infringement actions.
  • Actions for damages or compensation for provisional protection conferred by a published patent application.
  • Actions for provisional and protective measures and injunctions.
  • Actions relating to prior use rights.

For damages or compensation derived from provisional protection and/or prior use, the action shall be brought before the:

1)    local/regional division where the infringement has occurred; or where the defendant has residence or place of business,

2)    If the defendant has no residence or place of business within the Contracting Member States: the local/regional division where the infringement has occurred or before the central division.

3)    If the concerned Contracting Member State has no local/regional division: the central division.

 

D) Counterclaims for revocation/ Bifurcation:

When an infringement action is pending before the local/regional division and a counterclaim for the revocation of the patent at issue is made, the local/regional division will have four options:

  • Parties may also agree to bring actions before the division of their choice, including the central division.
  • It may proceed with the both the infringement action and counterclaim for revocation (and if appropriate request the appointment of a technically qualified judge in the field of technology concerned)
  • It may refer the counterclaim for revocation to the central division and then either suspend or proceed with the infringement case (similar to the German bifurcation case)
  • It may refer the entire case to the central division, upon the parties’ agreement.

The second option is referred to as bifurcating the questions of infringement and validity. This may however result in a pan-European injunction for a patent later found invalid.

 

(E) The role of the Court of Justice of the European Union:

The UPC will be a court common to the Contracting Member States. It must respect and apply European Union law and together with the Court of Justice of the European Union ensure its correct application and uniform interpretation. The UPC will in particular have the same obligation as any national court to request preliminary rulings in accordance with Article 267 of the Treaty on the Functioning of the European Union.

 

(F) Oppositions to the European Patent Organisation and parallel proceedings before the UPC and the EPO:

Oppositions at the EPO will still be possible. A party shall inform the UPC of any pending revocation, limitation or opposition proceedings before the EPO. The UPC may stay its proceedings when a rapid decision may be expected from the EPO, as stated by Article 33.10 of the UPC Agreement. The Court may also of its own motion – or at the request of a party – requests that opposition proceedings before the European Patent Office be accelerated in accordance with the proceedings of the European Patent Office, as stated in Rule 298 of the draft Rules of Procedure of the UPC.

 

 

 

Posted on

The Unified Patent Court – Overview and Background.

(A) The current situation:

Currently, national courts and authorities of the contracting states of the European Patent Convention are competent to decide on the infringement and validity of European patents.

In practice, this gives rise to a number of difficulties when a patent proprietor wishes to enforce a European patent – or when a third-party seeks the revocation of a European patent – in several countries: high costs, risk of diverging decisions and lack of legal certainty. Forum shopping is also inevitable as parties seek to take advantage of differences in national courts’ interpretation of harmonized European patent law and in procedural laws, as well as differences in speed (between “slow” and “quick” courts) and in the level of damages awarded.

The Unified Patent Court Agreement addresses the above problems by creating a specialized patent court, the “Unified Patent Court”, or UPC, with exclusive jurisdiction for litigation relating to European patents and European patents with unitary effect (unitary patents).

 

(B) The UPC Structure:

The UPC will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will be composed of a central division (with seat in Paris and two sections in London and Munich) and by several local and regional divisions in the Contracting Member States to the Agreement. The Court of Appeal will be located in Luxembourg.

 

(C) Panel Composition:

The UPC panels will have both legally and technically qualified judges from all over Europe.

Panels in the local/regional divisions will be made up of three legally qualified judges. In addition it will be possible to appoint a technically qualified judge from a pool of judges, either on request of one of the parties or on the panel’s own initiative. For local divisions, two of the three legally qualified judges must be nationals of the contracting state in which the division is set up if this state has 50 or more patent cases per year. Otherwise, only one judge from this state will be required. For regional divisions the same rule applies with the condition that two judges come from the region.

Panels in the central division will be made up of two legally qualified judges who are nationals of different contracting member states and one technically qualified judge with qualifications and experience in the relevant technological field.  When hearing actions concerning certain EPO decisions, the panel will be composed of three legally qualified judges.

Panels in the court of appeal will be made up of three legally qualified judges who are nationals of different contracting member states and two technically qualified judges with qualifications and experience in the relevant technological field.

 

(D) Entry into force

The UPC will come into existence and start its operations immediately after the UPC Agreement enters into force.

As explained by the UPC Preparatory commitment, “the Agreement will enter into force on the first day of the fourth month after the fulfillment of the following two requirements (whichever is the latest):

1. The deposit of the thirteenth instrument of ratification, including Germany, the United Kingdom and France (the three Contracting Member States in which the highest number of European patents had effect in 2012).

2. The date of entry into force of the amendments to Regulation (EU) No 1215/2012 (Brussels I Regulation) concerning its relationship with the Agreement.[4]” The European Commission is expected to present a proposal during 2013. The necessary amendments can then be adopted and enter into force before the target date of the entering into force of the UPC in early 2015.

The Preparatory Committee is officially working towards early 2015 as a target date for the UPC to be set up.

 

(E) Implementation

The signatory states of the UPC Agreement are working together to ensure that the UPC is fully operational by the time the Agreement comes into force. To this end the Preparatory Committee oversees work in five main areas:

  • Legal framework of the UPC,
  • Financial aspects of the court,
  • IT,
  • Facilities,
  • HR & Judicial Training.

Each area has been assigned to a working group with the responsibility to develop proposals. The details and the target dates are established in the roadmap of the Preparatory Committee which is published on the official website of the Committee and can be found here.

 

(F) Enforcement of UPC decisions

Any ruling by the court on a patent will be simultaneously valid in all countries in which that patent has been validated and will be enforced under procedures governed by the law of the country(ies) where enforcement takes place.

 

 (G) Fees

The fee system for the court is yet to be finalized, but will be agreed upon by the participating Member States according to Article 36 (3) of the Agreement. In setting the fees Member States will need to balance the need to ensure the Court is accessible for users, especially SME’s, with the requirement in the Agreement that the system will eventually self financing.

 

 

Posted on

French Prime Minister submits bill for the Ratification of the UPC Agreement:

On October 23rd, the French Prime Minister Jean-Marc Ayrault submitted to the French Senate a bill authorizing the ratification of the UPC Agreement. It now needs to be discussed by the National Assembly (French House of Representatives) before being finally adopted. The Bill was however introduced under the “Procedure Accélérée” (expedited procedure), which limits the number of times a Bill passes between the two chambers (the Assemblée Nationale and the Sénat) and is usually used to speed up a bill’s progress. This is particularly noteworthy as France is one of the three mandatory ratification countries for the implementation of the UPC regime.

 

The bill can be found on the French Senate website.

Posted on

The Preparatory Committee has now launched expression of interest of Candidates Judges:

Brexit and the German constitutional challenge

On September 20th 2013 the Preparatory Committee launched a call for expression of interest for legally as well as technically qualified judges for the UPC. One of the priorities identified in the Preparatory Committee roadmap is in fact to contribute to the nomination process of the first group of candidate judges and to ensure the organisation of the training of candidate judges in the preparatory phase.  The closing date is 15 November 20.

 

For more information see the UPC website.

 

Posted on

Denmark might be joining the Unified Patent Court within the next few months:

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

According to the newspaper Berlingske Tidende the Danish Government has included a bill in its legislative proposals to join the Unified Patent Court. The Minister for Trade and European Affairs, Nick Hækkerup declared about the bill that “(the) roadmap is to publish (the government’s proposals) and argue why the parliament should support this. It’s so obviously in our interest because it would also protect the inventions that are being made in Denmark”. It will not however be straightforward for Denmark to join the UPC. In fact because Denmark has an opt-out from EU legislation on Justice, if more than 80% of its MPs decide to vote against the bill, the Danish government will need to call for a referendum.

 

More information here.

Posted on

Austria is the first Member state country to ratify the Agreement on the Unified Patent Court:

Protocol to the Agreement on a Unified Patent Court on provisional application

On 7th August 2013, Austria became the first country to ratify the Agreement on the Unified Patent Court. However for the UPC Agreement to enter into force, thirteen instrument of ratification, including Germany, France and the United Kingdom are deposited.

 

France introduced a bill for the ratification of the UPC Agreement on 23rd October in the French Senate. For more information see “News: Ratification of the UPC Agreement by the French Prime Minister”

 

In the United Kingdom, the UPC Agreement was laid before Parliament on 14 June 2013. The Agreement must also be given effect in UK law before it can be ratified. This will mean making changes to UK law to ensure that it complies with the provisions of the UPC Agreement. The first step of this process is provided for in the Intellectual Property Bill introduced into Parliament on 9 May 2013. Clause 17 of the IP Bill will enable the Government to make the detailed changes to UK law at a later date using secondary legislation which will be considered by both Houses of Parliament.


[1] Hyperlink