The Preparatory Committee published the new draft rules of procedure. These include the following changes from the draft published in June 2016:
Rule 5, which provides for the lodging of an application to opt-out and the withdrawal of an opt-out, now specifies that the application to opt-out shall contain:
- The name of each proprietor or applicant for the European patent or application.
- The name and address of “any person” lodging the opt-out application on behalf of the proprietor or the applicant as well as the mandate for lodging the application to opt-out. This identification requirement is different from the obligation to identify the lawyers and patent attorneys representing the applicant and patent proprietor. It applies to representatives that do not fall within article 48 of the Agreement on the Unified Patent Court. This means that non-EU lawyers and patent attorneys as well as private companies will be able to opt-out on behalf of the patent owner or applicant. It is however unclear whether the obligation to include a mandate applies to all representatives or just “any other person lodging the Application to opt out on behalf of the proprietor or the applicant“. In fact although the new Draft Rules of Procedure mention this obligation in relation to the latter representative, the UPC Case Management System requires a mandate for “the person lodging this Application on behalf of each proprietor/applicant/holder“, without specifying who is bound by it. The mandate template (see below) does not give any useful information either at to this issue.
Rule 5 also stipulates that the opt-out is deemed to be withdrawn where an application for a European patent subject to an opt-out proceeds to grant as a European patent with unitary effect. The proprietor is thus not anymore under the obligation to notify the Registrar.
Rule 152, which allows for the compensation for representation costs, now provides for the party submitting a claim, counterclaim, application request or appeal (subject to a fixed fee) to assess the value of its action in its first submission. The Administrative Committee will beforehand adopt a scale of ceilings for recoverable costs by reference to the value of the proceedings. The Court will in any case hear the other party before it grants the other party compensation for its costs.
Rule 209 now states that when an applicant applies for protective measures for a patent which is also the subject of a protective letter, she can withdraw her application. She may also request the Court to order that the application and its contents remain confidential.
Rule 370, which lists court fees for the Court of First Instance and the Court of Appeal, now distinguishes between fixed fees and value-based fees. It also enumerates their corresponding procedures and actions. It details the value assessment of the relevant action, the amount to be paid by small and micro enterprises, and the modalities of reimbursement of fixed and value-based fees.
Finally, Rule 371 and Rule 377 respectively add that :
- the claimant shall pay the value-based fee shall according to her assessment of the value at the time of lodging the relevant pleading or application. If the judge-rapporteur determines a higher value, the claimant will have to pay the remaining fee within 10 days.
- any applicant can apply for legal aid. This differs from the previous Draft Rules of Procedure which limited the granting of legal aid to “any natural person who is a citizen of the European Union or a third country national residing lawfully in a Member State of the European Union “.