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Alexander Ramsey: It is in member states’ interest to be part of the Unified Patent Court from the start

Alexander Ramsey is the chairman of the Preparatory Committee of the Unified Patent Court (UPC) and also speaker at the Unitary Patent Package Conference. He has set the ambitious goal to finish his work by June 2016 with a view to the UPC opening early 2017. Court fees, recruitment and training of judges and fine-tuning of the IT-system are just a few of the issues the committee is still working on. The court’s start, however, will also depend on the member states. So far nine out of the 25 have ratified, whereas thirteen are needed, including France, the UK and Germany. Ramsey thinks more ratifications will follow soon. It’s important for the Unitary Patent (UP) system and also for the member states to be in from day one, he told Kluwer IP Law.

A provisional Protocol to the UPC Agreement, which allows for final decisions on the practical set up of the court, for instance the recruitment of judges, was adopted in October 2015. How many member states have signed this protocol?

Ramsay‘The last time I checked, eight member states had signed it and two had declared they would sign it. That is also a possibility: to declare yourself bound by the provisional application, but not formally signing the protocol. There are a number of member states that wait with signing until they ratify the UPC agreement itself, and others wait with declaring until there is a firm date for the start up of the provisional application phase. For instance Belgium has declared that.’

Is the lack of signatories a problem?

‘Of course this is a problem, we need to have thirteen member states approving the protocol and also the UPC agreement before it can enter into force.’

In discussing the Unitary Patent system, people usually refer to its 25 member states. In the meantime, it seems that quite a few states, about five to ten, are not active at all in getting the ratification through parliament. Is that the case indeed?

‘We have a couple of member states that have declared they will put their ratification process on hold. At least two as far as I know. Some other member states are watching and waiting. In the meantime, there are a lot of countries that are moving forward with their ratification processes. I expect to have a number of ratifications during the first half of 2016.’

With how many states do you think will the Unified Patent Court start its work?

‘I would like to have as many member states in the first phase as possible. Only in that way they can be part of the establishment of the UPC. Because the court will be established in the period of the provisional application. If they haven’t joined yet, they will not be part of the actual buildup of the court and they will lose the possibility to influence it. So I think it is in member states’ interest to ratify and be in the first batch of UPC member states.’

Won’t the Unitary Patent system get complicated if states start joining one after another?

‘I would of course very much like everybody to be in from the start, because it would be more simple and much easier, but it’s part of the system that we need to adapt to. So we will start with a number of states, hopefully more than thirteen, somewhere between 15 to 20 I guess, and eventually some member states will join and the territory will expand.’

What can you say about the fee to opt out from the jurisdiction of the UPC? Many think 80 euro, as proposed last year, is too high.

‘It’s one of the views expressed in the consultation we had on the fees and recoverable costs. Some issues were generally supported and this was one of them. Users voiced concern about the opt-out fee, wanting it to be zero or at least substantially lower than 80 euro. Zero is one of the options for us. It is on the agenda of the next meeting of the UPC Preparatory Committee, 24 and 25 February 2016. Hopefully after that we will have clarity on this issue.’

It is being said that the first president of the Unified Patent Court will be French. Is that correct?

‘No. There are two presidents at the UPC. One for the Court of Appeal, who is the top official of the organization. This president will be elected by the judges of the Court of Appeal (art 13 UPCA), regardless of his or her nationality. The Court of First Instance has a president as well. In this case, there is a restriction that the first president of the Court of First Instance will have to be French. He will be chosen by the full-time judges of the court of first instance (art 14 UPCA).’

But I understand there are hardly going to be any full-time judges. The plan of the UPC Preparatory Committee is to appoint about fifty, mainly part-time judges. How are you going to solve that?

‘There will have to be some full-time judges, otherwise we can’t elect  a president! And regardless of that, we’ll probably have to have some at the bigger locations. But there won’t be many.’

Written by: Kluwer UPC News blogger
Source: Alexander Ramsey: It is in member states interest to be part of the Unified Patent Court from the start

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Report of Unitary Patent Package Conference 2016 in Amsterdam

Written by: Kian Hsia, Bird & Bird

On 4 and 5 February 2016 the two-day Euroforum Unitary Patent Package Conference 2016 was held in Amsterdam. The conference was very successful and well attended by more than one hundred participants from different European countries. Among them were legal counsels from the industry, but also patent judges from Belgium, Germany and the Netherlands as well as lawyers and patent attorneys.

This year keynote speakers included Alexander Ramsay, Chairman of the Preparatory Committee, Kevin Mooney Chairman of the Drafting Committee on the Rules of Procedure, Margot Fröhlinger, Principal Director Patent Law and Multilateral Affairs of the EPO, Jacques Combeau, IP advisor European and International affairs at Air Liquide, and Wouter Pors, head of IP for Bird & Bird the Netherlands.

Day 1

The first day was chaired by Richard Vary, Head of Litigation Nokia and was dedicated to presentations given by key note speakers. Alexander Ramsay kicked off the conference with an update of the UPC and the last steps to be taken before the introduction in 2017. He said that the Preparatory Committee would be ready by mid-2016 and asked the audience whether they would be. This was followed by Bas Pinckaers who discussed the differences between Unitary Patents and traditional European patents, and specifically the advantages and disadvantages of both.

After the coffee break Wouter Pors presented patent strategies. He explained how companies could best prepare for the upcoming UPC by, e.g. first reviewing their patent portfolio and then decide which strategy to follow. Furthermore, he discussed subjects like the sunrise register, bifurcation and different kind of injunctions that the UPC may impose.

View on UPC

Next, in-house patent attorneys Francesco Macchetta, Director Intellectual Property at Bracco Group and Coreena Brinck, Head of Patenting Operations at Nokia Technologies were interviewed about their company’s view on the UPC. They both made it clear that their companies welcome the UPC and are indeed taking the necessary preparations. Furthermore, they discussed the opt-out possibilities at the UPC and what may be reasons to opt-out from the UPC.

The interview was shortly followed by a discussion panel between European patent attorneys and patent lawyers. The panel consisted of Koen Bijvank of V.O. Patents and Trademarks, Wouter Pors, Dr. Christof Augenstein of Kather Augenstein Rechtsanwälte and Martin Jackson of JA Kemp . The discussion was, among others, about the question whether the minimum requirements for the new Litigation Certificate for European Patent Attorneys will be enough, while Wouter Pors argued that the focus should not only be on European Patent Attorneys but also on patent lawyers litigating in the UPC. He argued to raise the bar for patent lawyers litigating in the UPC.

Thereafter, a second interview was held regarding the views from the bench. Judges, Dr. Elke Schwager from the High Court of Munich, Sam Granata from the Court of Appeal Antwerp, and Edger F. Brinkman from the Court of the Hague expressed their views regarding the UPC. They discussed the mediation/arbitration possibilities at the UPC and the import role of the Judge Rapporteur. Dr. Schwager said that the Munich Court has had a very good experience with mediation by Court judges. The judges also presented their views on the question on which basis the President of the Court of First Instance and the Court of Appeal should be elected. They agreed that the President should be familiar with patent practices of different European countries.

Rules of Procedure for the UPC

After the lunch, Kevin Mooney gave an update regarding the Rules of Procedure for the UPC, the training of judges and the fees proposal. He started with the important changes in the 18th Draft of the Rules of Procedure followed by the training of the judges. An important change is the limitation of the so-called English limited rule. At the time of the Trier hearing this was meant to enable both pleadings at the oral hearing in a national language and issuing the judgment in a national language in cases where the language of litigation is English, but in the 18th draft it only enables issuing the judgment in a national language. He explained that it is expected that the UPC will start with 45-50 part-time judges and emphasized that the success of the UPC will be partially determined by the quality of these UPC judges. The training in substantive patent law for candidate judges with little experience in patent litigation was already completed early 2015. The training for all candidate judges envisaged for the second half of 2016 will inter alia being be on the Rules of Procedure and “Judgecraft”. The presentation ended with topics such as fees and the ceiling on the recoverable attorney costs.

Implementation of the Unitary Patent

After that, Margot Fröhlinger’s presentation continued with the state of implementation of the Unitary Patent by the EPO and member states. In particular, the rules relating to the (renewal) fees and budgetary and financial rules were discussed. The level of the renewal fees of the UP is equivalent to the accumulated fees of Germany, France, United Kingdom and the Netherlands and this will not change anymore. Furthermore, on average a traditional European patent is only validated in 4 – 5 member states.

At the end of the first day several roundtable discussions were held. The participants were split into four discussion groups: (1) Rules of procedure- the final version and the training of the Judges by Kevin Mooney, (2) Role of the European Patent Attorney during prosecution and litigation by Hans Hutter of NLO European Patent and Trademark Attorneys, (3) Forum shopping by Wouter Pors, and (4) The Unitary Patent and the Unified Patent Court, how will it work in practice? by Tom Carver of JA Kemp.. In these four groups different topics were discussed such as the training of judges, the level of the op-out fees, whether or not a European patent attorney would on his own litigate in front of the UPC, forum shopping between the UPC and national courts and the central revocation procedure at the UPC. Alexander Ramsay said that the couleur locale of local divisions could be limited by rotating the judges. However, it was then discussed that, since in the more experienced divisions there will always be two judges from that country on the panel, rotation of experienced judges may at the start in practice be limited to the four German divisions, limiting the competition between them. The first day ended with a surprise workshop given by  the Dutch Champion Air Conducting, Richard van Roessel.

Day 2

The second day was chaired by Wouter Pors and started with a recap of the first day followed by in-depth workshops. Bart van Wezenbeek kicked off with a Patent Strategy workshop in which he discussed filing strategies, when to opt-out and when to opt-in, registration at the Sunrise register and portfolio management. Next was a Costs workshop given by Jacques Combeau in which he discussed the cost of the Unitary Patent protection. He specifically touched upon topics like the renewal fees and translation and other related costs. Since validating a traditional European patent does not only require payment of the renewal fees, but also involves transaction costs, proprietors may find that they can get protection for up to 25 countries for a Unitary Patent for less money than validating a traditional European patent in four countries. The downside will be that a Unitary Patent cannot be “pruned” during its entire life time. Discussions concerning the valued-based and fixed court fees as well as the ceiling on the recoverable attorney costs were hot topics. Some participants argued that such ceilings on recoverable attorney costs may be contrary to the Enforcement Directive. In the last workshop, Wouter Pors demonstrated the procedural steps at the UPC with a hypothetical case in which he took the participants through the different phases of the UPC litigation.

Overall, the UPP Conference has again been very successful, and with the upcoming start of the UPC at the beginning of 2017, the next Euroforum UPP Conference promises to be a very interesting one. It is likely that at that time the practical implementation of the UPC can be discussed.

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The Unitary Patent system: 13, 17+ or 25 Member States?

Publisher Kluwer IP Law participated at the Unitary Patent Package Conference 2016 in Amsterdam. Hereby they share an interesting summary of the second day of the conference.

The big picture for the Unitary Patent (UP) and the Unified Patent Court (UPC) may be clear for the patent attorneys, lawyers and other experts who will soon have to deal with the new European patent system. However, there’ll be many surprises in the details.

During the second day of the Unitary Patent Package Conference, 4 & 5 February 2016 in Amsterdam, three workshops were on the programme: patent strategy, costs and the court procedure. They had one thing in common. Often the answer to questions was: ‘We’ll have to wait and see’, ‘only the UPC can decide that.’

Staying in or opting out of the jurisdiction of the UPC was one of the issues that led to discussion and question marks. ‘Isn’t it illegal to require companies to act and to pay to stay out of a system they never asked to become part of?’, one attendant argued. ‘It would be more logical if they had to opt into the UPC.’

Opt-out

Others wanted to know who can do the opt-out. The correct answer: ‘Someone who is entitled to do so.’ But then, what if something goes wrong? And does a small mistake in an application make the opt-out invalid? Or a big one? Little is known about the consequences and that may cause problems. Another issue: what about third parties? Can they invoke mistakes in an opt-out? Or challenge the unitary effect of a patent?

An exclusive licensee can sue for infringement, but how about a licensee with exclusive rights only in Germany. Or a sole licensee? ‘These are both questions for the UPC to answer.’

Most attendants however seemed positive about the Unified Patent Court. As Jacques Combeau of Air Liquide said: ‘We have no fear of the UPC, we’re happy with the UPC, and we’re happy to litigate at the UPC. Air Liquide will not opt out its patents, or only a very few.’

Renewal fees

In the meantime, Combeau was one of the most critical voices. He thinks the Unitary Patent renewal fees may be too high. ‘The fees should be reasonably attractive to European patent owners. It seems that the fees for the first ten years clearly support that. But it is not so clear that the same applies for the later years.’ Combeau pointed out an important difference, which makes the UP ‘extremely costly’: you cannot drop part of the UP protection and pay less maintenance fees after some years, as is a common practice with European bundle patents.

Combeau touched on another possible problem as well. ‘There is still some uncertainty as to the precise territory that will be covered by the UP system.’ It is clear that several of the 25 member states will not ratify the UPC Agreement any time soon. ‘If we end up with only 13 ratifications (the minimum number to trigger the start of the UPC, ed.), I don’t see a bright future for the UP system. It wouldn’t be a good sign and it would make the UP less attractive, because you would have to pay extra fees in all countries that didn’t join.’

Countries in the Unitary Patent system

Wouter Pors, partner of Bird & Bird, thinks the initial number of countries in the Unitary Patent system will be 17 and probably a few more. ‘Nine states have already ratified. Estonia, Germany, Ireland, Italy, Latvia, Lithuania, the Netherlands and the UK have indicated they will ratify. I expect some of the remaining countries to ratify reasonably soon as well.’

Pors doesn’t see it as a problem that the remaining states –  Bulgaria, Cyprus, the Czech republic, Greece, Hungary, Romania, Slovakia , Slovenia – stay out for now, as there is little IP litigation in these countries.

According to Pors, many people who are likely to be judges at the future Unified Patent Court see it as a top priority to live up to the UPC’s promise of fast procedures and decisions within a year. ‘So if you have a month to file documents and it is December, you’ll have to skip your Christmas holiday.’

Written by: Kluwer UPC News blogger
Source: ‘The Unitary Patent system: 13, 17+ or 25 Member States?’

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Preparations for the Unified Patent Court concluded by mid-2016. No fee for opting out?

Publisher Kluwer IP Law participated at the first day of the Unitary Patent Package Conference 2016 in Amsterdam. Hereby they share an interesting summary of Alexander Ramsey’s presentation about The Unitary Patent and the Unified Patent Court: the last steps before the introduction in 2016

 

Summary of Unitary Patent Package 2016 – Day 1 – Presentation Alexander Ramsay

We are ready, are you? The ‘last steps’ towards the introduction of the Unitary Patent (UP) system were a recurring theme on the first day of the Unitary Patent Package Conference in Amsterdam. A  lot of experts and specialists who are closely involved in the creation of the UP and the Unified Patent Court (UPC) were present at the meeting. But many newcomers as well, realizing it is about time to learn more about the Unitary Patent and what it means for their companies.

Things are developing fast now. Alexander Ramsey, chairman of the UPC Preparatory Committee explained the committee wants to finish preparations for the UPC by mid 2016. The main pending topics are the Protocol on Privileges and Immunities, fine-tuning of the IT system, corporate functions and facilities, and crucial issues such as a decision on the UPC fees and recoverable costs, the recruitment and training of judges and arrangements regarding their salaries and pensions, among others.

Decisions on the court fees and the Protocol on Privileges and Immunities are expected at the Preparatory Committee’s meeting of 24 and 25 February 2016. The recruitment of judges will start soon after.

The UPC Agreement

According to Ramsey it will mainly depend on the political will of member states when the new  system can start functioning. A Protocol on the Provisional Application of the UPC Agreement (UPCA) enters into force as soon as 13 member states, including France, Germany and the UK, have at least parliamentary approval to ratify the UPC. This is different from the UPC Agreement, which states that only the formal deposit of the 13th instrument of ratification at the Council of the EU can trigger the start of the UPCA itself. Probably Germany or the UK will postpone this formal deposit, in order to create a six month period to ensure a smooth start of the UPC. ‘If the member states can match our tempo, the Provisional Application could start in the fall of 2016. Then it is reasonable to assume that the court could start its operations early 2017’, Ramsey said.

Procedure for opting out patents

Several speakers at the conference pointed out that the procedure for opting out patents of the jurisdiction of the UPC, before the court starts its work, will be very simple and take 15 seconds or a minute at most. This should cost much less than the 80 euro per patent as has been proposed, Bas Pinckaers, head of the patent department of Van Doorne said. Kevin Mooney, chairman of the Drafting Committee for the UPC Rules of Procedure, has ‘sincere hope’ that there will be no fee at all. According to Alexander Ramsay this is one of the options that is being considered, but a decision will made be later this month.

There was some discussion as well about the nomination of judges. Several people were concerned political and geographical criteria, rather than the expertise and experience of the judges would be important.

This is certainly a factor in one case: Alexander Ramsey explained that during the negotiations on the UP system it was agreed that the first president of the Court of First Instance would be French. The president of the Court of Appeal, the highest position in the UPC, will be chosen by and from among the first full-time judges. Initially, some 50 legally qualified judges will be appointed, most of them however as part-time judges. The number of technically qualified judges will probable even be lower.

Written by: Kluwer UPC News blogger
Source: ‘Preparations for the Unified Patent Court concluded by mid-2016. No fee for opting out?’