The Local Division Hamburg of the Unified Patent Court is being introduced to the public this Wednesday, 7 October 2015
After a presentation of the first insights into the project Local Division Hamburg by Katja Günther, state secretary of the ministry of justice of Hamburg, Professor Dr. Winfried Tilman, Of Counsel at Hogan Lovells will explain the 18th and final draft of the UPC rules of procedure. He has drafted it as one of the German members of the UPC Expert Group.
Finally, experts from different areas of the patent law practice will talk about the current draft. Next to Professor Tilmann, Beate Schmidt, president of the German Federal Patent Court, Dr. Volkmar Henke, patent lawyer and Partner at Eisenführ Speiser and Michaela Opfer, project manager of the Local Division Hamburg, will discuss the following questions:
- Which divisions are competent for which actions? - How does the opt-out/opt-in work? - What will be the language of the proceedings? - What are the stages of the proceedings and which time limits have to be kept in mind? - What are the consequences of the UPC for the competence of the national courts?
The Contracting Member States promised to the users of the new Unified Patent Court (UPC) that the proceedings and judgements will ensure highest quality. To this end, the Agreement on the Unified Patent Court (UPCA) requires that judges should comply with highest standards in patent litigation. Unfortunately, representatives do not need to fulfil this standard, as the new draft for the European Patent Litigation Certificate (EPLC) confirms.
The UPC will establish a completely new system for civil law proceedings. It will be the first court on a European level that decides about claims between private parties. Therefore, it will not only harmonize partly national procedural rules, but also needs to harmonize completely different legal traditions. This will be a challenge to every lawyer that is in charge of any matter at this new court.
EPLAW comments to the Public Consultation on the Rules on Court fees and Recoverable costs of UPC
Further to the public consultation on the proposed Rules of procedure regarding court fees and recoverable costs under the UPC Agreement, the EPLAW Board in consultation with a working group of EPLAW members from various nationalities prepared comments which were sent to the Preparatory Committee on 29 July 2015.
- Trilingual booklet DE/EN/FR comprising Unitary Patent Regulations, Unified Patent Court Agreement and Draft № 17 Rules of Procedure (31 October 2014) and the full transcript of the Trier public hearing (26 November 2014): (direct link) A version of this booklet incorporating the 18th draft of the Rules of Procedure of the Unified Patent Court will be available when this draft is approved and published by the Preparatory Committee, hopefully in September 2015.
The full transcript of the Trier public hearing (26 November 2014) is also available as a separate document here.
Trilingual booklet DE/EN/FR comprising Unitary Patent Regulations, Unified Patent Court Agreement and Draft № 17 Rules of Procedure (31 October 2014) (direct link here)
(A version of this booklet incorporating the full transcript of the Public Oral Hearing on the 17th draft of the Rules of Procedure of the Unified Patent Court held in Trier on 26 November 2014 will be available shortly.)
- The two judgments handed down on 5 May 2015 by the CJEU dismissing Spain’s actions against the EU regulations on the unitary patent protection:
Case C146/13 concerning Regulation (EU) No 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection DE, EN, FR
Case C147/13 concerning Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements DE, EN, FR
Consultation Document on the Rules on Court fees and recoverable costs launched on 8 May 2015 by the Preparatory Committee Unified Patent Court (direct link here).
Property and contractual aspects of Unitary Patents and of patents in the UPC system by Wouter Pors, Bird & Bird The Hague
Introduction The introduction of the Unitary Patent Package, consisting of the Unitary Patent (UP) and the Unified Patent Court (UPC) raises new issues with regard to patents as an object of property and with regard to contractual aspects of both Unitary Patents and traditional European patents. The law of property and contract law have not been harmonized throughout the European Union. Actually, there are big differences, especially between common law systems such as the United Kingdom and Ireland on the one hand and civil law systems on the other hand.
The Unitary Patent Package is not aiming at providing a solution for this. Actually, recital 6 of the Unitary Patent Regulation (UPR) provides: “As an object of property, a European patent with unitary effect should be dealt with in its entirety, and in all the participating Member States, as a national patent of the participating Member State determined in accordance with specific criteria such as the applicant’s residence, principal place of business or place of business.” This is then repeated in Article 7(1) UPR, followed by further details on how the place of business is determined.
The oral hearing on the Rules of Procedure of the Unified Patent Court, by Wouter Pors, Bird & Bird The Hague
Introduction The Unified Patent Court (UPC) is based on three documents: the Agreement on a Unified Patent Court (UPCA), the Statute of the Unified Patent Court and the Rules of Procedure (RoP), which are based on Article 52 UPCA.
The 15th draft of the Rules of Procedure was published on 31 May 2013, followed by a public consultation. There were more than 110 written submissions in this public consultation. The results of that consultation were incorporated in a redline 16th draft, published 31 January 2014, together with a Digest by the Expert Group (the former RoP drafting committee). The digest reports the views and suggestions submitted during the consultation, comments on those views and suggestions by Prof.dr. Winfried Tilmann of the Expert Group and the decisions made by the Expert Group. These decisions were made after the draft had also been discussed with a number of patent judges at the Venice Conference.
No Building for the Unified Patent Court?, by Ulrich Blumenröder, Grünecker
When it was already foreseeable at the end of 2001/beginning of 2012 that the establishment of a European Patent Court would be no chimera (any longer), but rather a reality, all big states made great efforts to host the seat of the central chamber, and towns (in Germany) tried to become the seat of local chambers. The advantage for the respective Member State, the respective Federal state and the respective town was generally regarded as considerable.
Now, following the decision in favor of Munich as the seat of a department of the central chamber and a local chamber, the implementation seems to lack the enthusiasm of the efforts employed in the context of the decision of principle.
Review of the latest UPC Rules released prior to public hearings, by Nicholas Fox & Scott Parker, Simmons & Simmons
On 31 October the Legal Framework Group of the Preparatory Committee issued the latest version of the draft Rules of Procedure for the Unified Patent Court in advance of a public consultation hearing being held in Trier, Germany on 26 November 2014. Subject to any further revision which occurs as a result of that public hearing, these latest rules are likely to reflect the final version of the UPC Rules of Procedure. The amendments made by the Preparatory Committee have settled a number of political issues left open by the Rules Committee which had drafted the previous versions of the rules.
As is discussed in greater detail below, the key revision to the rules concern:
• Clarifying the opt-out provisions • Settling the language scheme for the Court • Arrangement to reduce any “injunction gap” in bifurcated proceedings • Emphasising judicial discretion in determining remedies • Finalising the procedural orders appeals regime • Balancing public access and claims for confidentiality in court documents • Clarifying the rules for service; and • Providing Swedish and Finnish patent jurists with a right of representation before the Court
Read the entire contribution here or if the link does not work below the break.
Unified Patent Court Rules of Procedure – close to the finish line, by Wouter Pors, Bird & Bird The Hague
"The 17th draft of the UPC Rules of Procedure was published on 31 October 2014 as a compare document that shows the changes in comparison to the 15th draft. Changes in red have been made by the drafting committee based on the submissions made in the public consultation that was held in 2013. This version was previously published as the 16th draft and has already been discussed widely.
"For this article I assume that the reader is familiar with the UPC system and with the 16th draft. Changes in blue have been made in that 16th draft by the Legal Group of the Preparatory Committee. These will be discussed here. A table explaining the Legal Group’s changes has been attached to the 17th draft; this is similar to the Digest published on the UPC website, which explains the changes included in the 16th draft. The last stage in the public consultation on these rules will be an oral hearing on 26 November in Trier, which will focus on these latest two sets of changes. According to the roadmap that was published on the UPC website in September, the plan is for the Preparatory Committee to agree on a final version of the Rules of Procedure in May 2015."
The UPC Agreement and the EU Service Regulation - the right to a translation of the UPC Statement of claim, by Wouter Pors, Bird & Bird The Hague
In litigation before national courts in the European Union, a defendant based in the EU is always entitled to a translation of the claims in a language that he understands, or an official language of the place where the document is served on him. This is provided for in the Service Regulation. The question arises whether this also applies to litigation before the Unified Patent Court, which can be conducted in a relatively large number of languages, depending on the Division where the action is introduced.
New documents have been added to the website www.upc.documents.eu.com:
- The revised 16th version of the draft Rules of Procedure, made available on 6 March 2014 by the Preparatory Committee of the Unified Patent Court, in which the amendments to the previous version appear in mark-up mode, which may be read here
- A comprehensive digest prepared by the Expert Group for their discussions containing explanations on the approach taken, which may be read here
UPC drafting committee clarifies Rules but political battles remain, by Nicholas Fox & Scott Parker, Simmons & Simmons
Following a public consultation running from June to October 2013, the UPC Drafting Committee has now published a revised draft set of Rules of the Unitary Patent Court (the 16th such draft). The Legal Working Group of UPC Preparatory Committee under Johannes Karcher will now consider the latest draft and will arrange public hearings on the draft in the course of 2014.
The latest revision of the Rules of Procedure has clarified many areas of the Rules which are to be welcomed. However, the Drafting Committee’s amendments have been technical in nature and key political issues have been left for the Preparatory Committee to deal with. Key changes and outstanding issues are discussed below.
Rules on Opt-Outs clarified Although little of substance has changed the wording of Rule 5 on opt-outs has been heavily revised to clarify the procedures for opting out. The revised Rules make it clear that all proprietors must join in an application to opt-out a patent from the jurisdiction of the court and that any opt-out will apply to all designations where a common European patent has come into effect. Any opt-out will be effective for the entire lifetime of a patent unless the opt-out is withdrawn.
Effect of an opt-out on the substantive patent law to be applied by the national court – Interpretative note of the Preparatory Committee of the Unified Patent Court of January 29, 2014
The unitary patent package has created many legal problems, some of them due to the fact that the unitary patent is based on different layers of European, international and national law. The complex interaction within these different layers is not always clear. In recent discussions the question has arisen whether the provisions on substantive patent law in the Agreement on the unified patent court (UPCA) are applicable to European bundle patents for which an opt-out has been declared during the transitional period pursuant to Article 83 (3) UPCA (cf. e.g. Schröer, GRUR Int. 2013, 1102, at p. 1107 f.). Although it will be the responsibility of each national court to determine its position in this respect, the Preparatory Committee has found it useful to give its opinion on this matter.
The division of jurisdiction between national patent courts and the Unified Patent Court in the transitional period after the Agreement on a Unified Patent Court has come into force, by Konstantin Schallmoser, Preu Bohlig & Partner
1. The current position
a) The Unified Patent Court (UPC) is expected to come into operation in the first half of 2015. Although Austria is the only state to have ratified the UPC Agreement so far, there is little doubt that further progress in the ratification process in 2014 will see the UPC Agreement coming into force and the UPC coming into operation by the beginning of 2015, at the latest.
On 26 July 2013 the EU Commission submitted a proposal as to how the new EU Regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Reg. No 1215/2012) is to be amended in order to regulate the relationship of jurisdictions between the Unified Patent Court and the national court. It will be applicable from 1 January 2015 independently AUPC, thereby replacing the present Regulation (Reg. No 44/2001).
Is Chapter VII (Article 35) of the UPC Agreement introducing or abolishing patent arbitration in Europe – call for comments, by Erik Ficks, Roschier
In times of consultation in relation to the draft Rules of Procedure (ending on 1 October 2013) and when the Agreement on a Unified Patent Court (the Agreement is hereinafter referred to as the UPC, and the Unified Patent Court as the Court) seems an inevitable reality, having recently been ratified by Austria (“just” 12 more contracting states to go, including the UK, Germany and France) and the European Commission having proposed the necessary changes to the (recently recasted) Brussels I Regulation, I would like to bring to attention an entire Chapter (really only one Article) in the UPC which has received very little (or no) attention so far. Chapter VII on “Patent mediation and arbitration” contains one article – Article 35 on “Patent mediation and arbitration centre” – and is the last section of Part I (General and institutional provisions) of the UPC.
Below, I am addressing the ambiguities in this Chapter/Article and whether it is more likely to lead to the abolishing of patent arbitration in Europe than its introduction. (The status of patent mediation will also be (briefly) touched upon.) I will conclude with some questions and invite all readers to submit comments. Before concluding with the questions in relation to which comments are invited, a brief background to the issues – in general and under the UPC – is provided. In addition to Chapter VII (Article 35) of the UPC, patent mediation and arbitration is covered in the 15th draft of the Rules of Procedure. I am not in this article necessarily suggesting any changes to those sections of the draft. Any problems with the proposed system lies in the UPC and the more appropriate place to advocate suitable rules of procedure will instead be in the Mediation and Arbitration Rules to be established (one hopes that there will be a consultation, to my knowledge there is not even a working group for these Rules yet).
Unified Patent Court - Draft Rules of Procedure – 360-page handbook including the Agreement in the three official languages, the original English 15th Draft of the Rules of Procedure and a French translation prepared by Véron & Associés available on www.upc.documents.eu.com
As a contribution to the circulation of the Draft Rules of Procedure currently under consultation, the French patent litigation law firm Véron & Associés has prepared a French unofficial translation. It can be found on the document repository website www.upc.documents.eu.com that the firm created, in a 360-page handbook including the Agreement in the three official languages and the original English 15th Draft of the Rules of Procedure.
The recent Commission’s proposal for a Regulation amending Regulation (EU) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Brussels I) 26.7.2013, COM(2013) 554 final 2013/0268 (COD) is also available on this website.
The effect of an opt out under Article 83 of the Agreement on a Unified Patent Court on jurisdiction for decisions on the merits and preliminary injunctions, by Peter van Gemert, student at Universiteit Leiden and Wouter Pors, Bird & Bird
1. The Unified Patent Court and the issue of Article 83
Since the Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012, implementing enhanced cooperation in the area of the creation of unitary patent protection (Unitary Patent Regulation) and the Council Regulation (EU) No 1260/2012 of 17 December 2012, implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (Regulation on Translation Arrangements) have been adopted in December 2012 and following that the Agreement on a Unified Patent Court (UPC Agreement) was signed on 19 February 2013, the creation of a Unitary Patent and of a Unified Patent Court to enforce it seem to be making steady progress towards implementation, which is expected early 2015. As of then, Unitary Patents, with effect in all Member States participating in the enhanced cooperation can be obtained and the first action can then be launched in the Unified Patent Court.
EU - Revised Draft Rules of Procedure for the Unified Patent Court published, by Nicholas Fox & Scott Parker, Simmons & Simmons
The Preparatory Committee has published the latest draft of the Rules of Procedure for the Unified Patent Court. This article discusses the significant changes introduced. The draft Rules are open for comment until 01 October 2013.
On 25 June 2013, the Preparatory Committee published the latest draft of the Rules of Procedure for the Unified Patent Court. The Rules of Procedure are now open for comment from stakeholders and others until 01 October 2013. Comments must be submitted via e-mail to email@example.com.
Although much of the redrafting is minor in nature, the new rules incorporate a number of significant changes. Of particular note are the following:
UK takes first steps towards ratifying the UPC agreement / DK: Two regional chambers proposed for the Unified Patent Court, by Nicholas Fox and Ben Hall, Simmons & Simmons
On 08 May 2013, an Intellectual Property Bill1 was announced in the Queen’s Speech which will enable the UK to implement the Unified Patent Court Agreement. The new bill, in addition to providing a basis for enabling the UK to ratify the Unified Patent Court Agreement, also makes a number of amendments to UK design law.
Clause 16 of the Bill will introduce a new section into the UK’s Patents Act giving the Secretary of State power to amend UK law to enable the Unitary Patent Court to take effect. There are no provisions in the Bill in relation to the Unitary Patent as any changes required to implement the Unitary Patent can be made under the existing powers the government has to amend national legislation to comply with EU obligations.
Paul van Beukering and Alexander Ramsay are chair and vice-chair of the newly established Preparatory Committee which will be responsible for the setting up and coming into operation of the Unified Patent Court. They report in a letter to (amongst others) IP Judges and EPLAW dated 27 March, 2013:
"One of the first tasks of the Preparatory Committee will be to fix a roadmap for the early establishment and coming into operation of the Unified Patent Court. There was agreement amongst the participants that the tasks to be carried out are those contained in annex II to the attached document and that these should serve as a basis for the roadmap. It was also agreed that early 2015 would constitute a realistic target date for the entry into operation of the Unified Patent Court.
"The Preparatory Committee considers it to be of vital interest that stakeholders will be actively involved in the work of the Committee. Input from industry, patent judges and practitioners will be needed throughout the process, both at the expert level of the project teams and at a more general level. This will be realised through formal as well as informal consultations and dialogue sessions. An important instrument for communication will be the Committee’s website which will be developed shortly.
"Priority shall be given to a broad consultation on the Rules of Procedure amongst interested circles. The Committee will do so in close cooperation with the expert group that has worked intensively on a draft set of rules. Details about the consultation will be communicated in due time. Let us assure you, input from stakeholders is of utmost importance to the Committee especially on this essential element of the Committee’s work and a sufficient amount of time will be given."
The Agreement on a Unified Patent Court was signed on February 19, 2013 at a signing ceremony in Brussels by 24 EU member states. Bulgaria is said to sign in the coming days once internal procedures have been completed. Poland and Spain did not sign the agreement.
The signature of the Agreement triggers the ratification process by national parliaments. The Agreement requires 13 ratifications for entering into force, including the ratification by France, Germany and the United Kingdom.
For the documents making up the “patent package”, see the post dated 23/01/2013 here.
Read the press release of the Council Press: 61 Nr: 6590/13 here.
"Bird & Bird is running a series of seminars in 2013, across Europe, on the UPC. There will be various speakers at each seminar discussing how they see patent filing strategies and litigation before the UPC working in practice. This will include the latest news on the implementation of the system and the issues that are not covered by the Regulations and the Agreement, as well as a strategic view on the new choices for patent protection and for litigation. Although this is a unified system, there will be differences in approach at the various locations, which means you have to choose your options carefully."
Speakers include Paul van Beukering, Manager of Intellectual Propety Unit, Ministry of Economic Affairs, The Netherlands and Samuel Granata, Judge in the commercial court of Antwerp (Belgium).
Seminar dates and locations are as follows:
Thursday 7 March: The Hague Thursday 21 March: Munich Thursday 18 April: London Friday 31 May: Paris
"EU inventors will soon be able to get a unitary patent at last. After over 30 years of talks, a new regime will cut the cost of an EU patent by up to 80%, making it more competitive vis-à-vis the US and Japan. MEPs cut costs for small firms and tailored the regime to their needs, in a compromise deal with the Council endorsed by Parliament on Tuesday.
"In three separate voting sessions, MEPs approved the so-called "EU patent package" (unitary patent, language regime and unified patent court)."
Exclusivity, Transitional Arrangements and Opt-out; Risk of financial disaster for small companies in patent litigation, paper presented at the ERA/Queen Mary Conference in Paris by Jochen Pagenberg, Bardehle Pagenberg
The crucial point for success or failure of the whole court system is the quality, efficiency and cost of the proceedings before the new court. The shift of jurisdiction from the national courts to the Unified Patent Court (UPC) after a transitional period of only seven years with exclusive jurisdiction also for EP patents has therefore been a point of dispute from the beginning. Nobody seems to have requested this exclusivity, but nobody in Brussels was willing to change it either.
Keeping the national courts as a back up for litigating EP patents would solve a great number of open questions and problems in particular for small and medium enterprises (SMEs) which fear that they have been forgotten in the political discussion.
II Promises of alleged improvements
1. Industry as well as practitioners had always been promised that the introduction of the unitary patent and the corresponding UPC would ensure expeditious and high quality decisions which were to be measured against the best existing national patent courts. In this context users had emphasized that abolishing jurisdiction of the experienced national courts for EP patents before the UPC will have been tested and proven its quality would constitute a serious error. To force patentees of EP patents who only need protection in a few countries into the same judicial system as owners of unitary patents who need protection for the entire EU disregards the different needs of users.
"Delegations will find in the Annex a revised version of the consolidated text of the above mentioned draft agreement, which takes into account delegations’ comments. Changes in relation to the previous version (14750/12) are underlined."
Draft agreement on a Unified Patent Court and draft Statute - Consolidated text
"Delegations will find in the Annex the consolidated text of the above mentioned draft agreement, which will examined at the meeting of the Friends of the Presidency group on 5 October 2012. In addition to editorial improvements suggested by the Council's lawyer-linguists, this text strives to incorporate the elements agreed upon at the 5 December 2011 Competitiveness Council, as well as at the 29/30 June 2012 European Council.
The main changes introduced to the text are explained hereafter :
1. The definition of “European patent” in Art. 2 point (5) has been adapted to make it clear that the Court shall have the same jurisdiction with regard to European patents as national courts currently have. In this context, Art. 15b has been moved up as Art. -15 in order to clarify that the jurisdiction of the Court does not lag behind the jurisdiction of national courts in the area of patents as far as the exclusive competence of the Court in that area is concerned.
2. Article 5(3) has been amended in order to clarify that it will be possible to set up an additional local division for every one hundred patent cases.
3. Article 6(3) was amended in order to clarify what happens in situations where the exact number of 50 cases occurred.
4. In Article 6(4), the term "permanent" in the expression "permanent legally qualified judge" was deleted in order to align the wording with the preceding paragraphs. In the same paragraph, the reference to “regional list” was deleted, given that no such list is provided for in Art. 15.
5. The institutional provisions relating to the Administrative Committee, the Budget Committee and the Advisory Committee have been moved into Chapter I. For the Budget Committee, a new paragraph (3a) has been added to allow for the Budget Committee to adopt its rules of procedure.
6. In order to avoid possible misunderstandings, Union law was moved up in the list of sources of law for the UPC in Art 14e.
7. The terminology of Articles 14f to 14h has been aligned with that of Articles 6-8 of the draft UPP Regulation, the acquis and international Treaties.
8. In Article 21, the reference to the Statute was erroneous given that the latter does not contain any provisions on the costs relating to the functioning of the Centre. The current version proposes therefore that such costs be covered by the budget of the Court, in line with the costs for the training framework for judges (see Art. 20).
9. The previous Article 27 was split into two Articles (i.e. 26a and 27) in order to distinguish more clearly the question of legal capacity from the question of who may have legal standing before the Court.
10. In Article 28, an effort was made to clarify the status and the role of patent attorneys in the proceedings before the Court. Account has been taken of the fact that the concept of "patent attorney" might not be known in all Contracting States.
11. The provisions of Chapter IV (Powers of the Court) have been aligned more closely to the corresponding provisions of the Enforcement Directive.
12. The Final provisions have been streamlined. Article 58f (Languages of the Agreement) has been aligned on the corresponding provision of the EPC. Finally, Article 59 provides now for a single entry into force of the Agreement, which shall depend inter alia upon the prior entry into force of any amendments of Regulation (EC) 44/2001 are deemed necessary to accommodate the setting up of the UPC.
13. Finally, in Article 6 of the Statute (Immunity of judges) the wording has been aligned to that concerning judges of the Court of Justice of the European Union.
Read the entire draft agreement (in English) here.