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Plans for training of judges Unified Patent Court are ready

Source: Kluwer Patent Blog

Despite the uncertainty about what will happen in Germany with the Unified Patent Court Agreement, the UK is heading for ratification of the UPCA and preparations for the court are going on.

In the UK, the legislative steps have been completed and it is expected the UK will complete all formalities by depositing its instrument of ratification with the General Secretariat of the EU Council in March or April; it will be the 16th member state of the Unitary Patent system to do so.

The Unified Patent Court Agreement will enter into force once the UK and Germany have completed the ratification process. In Germany both chambers of parliament gave their support to the UPCA last year, but the ratification process was suspended after a constitutional challenge was filed against the UP system.

The German Federal Constitutional Court (FCC) is yet to decide whether to hear the case. If it does, this could considerably delay and even block the start of the Unitary Patent system. At the Unitary Patent Package conference last week in The Hague however, several observers showed optimism that the complaint will be dismissed, or rejected as unfounded. They based this on reports of several organizations which were requested by the FCC in the case. In these, experts in constitutional law point at jurisprudence that an individual cannot complain before the FCC about (in)compatibility of EU law with constitutional law, among others; they are convinced the other elements of the challenge are inadmissible or unfounded as well.

At the conference, chairman Alexander Ramsay of the UPC Preparatory Committee said work to prepare for the UP system is going on. ‘We are trying to use the time that we have to make sure the system works when we’re starting.’

A detailed planning has been made, among others, for the recruitment, training and appointment of UPC judges. Simmons & Simmons partner Kevin Mooney, chairman of the Drafting Committee and of the Expert Group of the UPC, explained this is linked to the start of the period of provisional application (PPA) of the UPCA. This period, during which practical preparations of the Court will be finalized, will last about 8 months in which, to begin with, UPC judges will be appointed.

According to Mooney, four to six months after the start of the PPA there will be a three-day training at the CEIPI in Paris for technically qualified judges, who need ‘to be introduced into the ethics of being a judge’. In the Budapest based training centre of the UPC, 95 appointed judges (45 legally and 50 technically qualified) will have a four-day training on the Rules of Procedure, including a mock trial of two days. The training will be in mixed groups of around 30 people.

In month six and seven, all 95 judges and registry staff will be trained three to four days to use the content management system of the Court, again in mixed groups. After this, in month eight, the UPC can start functioning.

In 2015, a group of 36 judges from smaller IP countries such as Bulgaria, Malta, Greece, Romania and Slovenia, were trained already in Budapest. In the past, some observers have questioned the quality of judges from countries with little experience in patent cases, but Kevin Mooney was impressed with the judges he trained.

He also said that, because of the delays the UPC has been facing, there might be a new, limited round of recruitment of UPC judges, once it is clear what the timetable for the start of the UPC will be. A final decision on this has not been made.

Preferibly before the decision of the FCC on the German complaint is known, the UPC Preparatory Committee will have to solve a crucial issue. Support from at least three member states for the Protocol on provisional application of the UPCA, including Germany, is necessary before the PPA – and the UPC – can start.

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‘Start of Unitary Patent system is taking too long’

Source: Kluwer Patent Blog

It is self-evident that the Unitary Patent system is good for Europe. The project will attract the best judges, there is a good set of procedural rules, the industry wants it, this is a ‘no brainer’ and the start of the system is taking too long.

Alexander Ramsay, chairman of the Preparatory Committee of the UPC said this at the Unitary Patent Package Conference, 8 and 9 february 2018 in The Hague. Ramsay, who has been on the dossier for ten years, five of them in the PrepCom, hailed the companionship and the ‘extremely dedicated people’ he has been working with.

According to Ramsay, the delays in the UP project, caused by the Brexit vote of 23 June 2016 and the German constitutional complaint which was filed last year against ratification of the Unified Patent Court Agreement (UPCA), are hard to accept. Still, the opinions of several associations (EPLIT, GRUR, DAV, BRAK, EPLAW) which had been requested by the German Federal Constitutional Court (FCC), have made him hopeful the Unitary Patent project will come through. All of these organizations have concluded the complaint should not be admitted by the FCC, or be rejected as unfounded.

Ramsay hopes the UK will complete the ratification formalities of the UPCA and the Protocol on Privileges and Immunities soon and that it can stay in the UP system post-Brexit. It is obvious, a ‘no brainer’ as well, according to the chairman of the PrepCom, that long-term participation of the UK is in the interest and to the benefit of all. ‘As a series of scholars have explained, this is legally possible. It depends on the political will.’

It is not easy to prepare for the system and be ‘almost ready for an indefinite period of time’, according to Ramsay. By now 15 Member States have ratified the UPCA, which means that quite a high number of states will be part of the UP system once it comes into effect. The Czech Republic, Slovakia, Cyprus and Ireland are not expected to be in this first group.

Regarding the Protocol on Provisional Application (PPA) of the UPCA, support from Germany and two more states is necessary. The protocol will allow parts of the UPC Agreement to be applied early. This includes final decisions on the practical set up of the Court, the recruitment of judges and testing of IT systems. The provisional application phase will also be used to allow for early registration of opt-out demands.

Despite the uncertainty and delays, technical preparations are going on, Ramsay explained during the conference. The Preparatory Committee formed five ‘interim teams’, which have to make sure everything works once the period of provisional application starts.

For the HR team, the recruitment of judges is a huge challenge. As Ramsay explained: ‘We cannot do the final recruitment, interviews, appoint judges before the start of the PPA.’ But plans have already been made how to organize this process. There will probably be interviews with candidate judges in four different locations. Teams of interviewers will be formed, who will need to stay in hotels. ‘This is a big operation that needs to run smoothly.’ Also during the PPA, the judges and other staff of the court will have to be trained.

The interim Registry, FI and Corporate functions teams are busy, among others, with finding resources so the court can do what it has to do – ‘The delay costs money’ – creating an HR system, an accountancy system etc. ‘We’re trying to use the time that we have to make sure the system works when we’re starting’, Ramsay said.

The interim IT team, chaired by Kevin Mooney, is working on the CMS system. According to Mooney, it turned out to be very complicated to translate the rules of procedure into a working CMS, although the work is progressing steadily. He explained the CMS will take parties through the steps of the proceedings. Generally, they will have to do most work offline and then upload documents.

Mooney also said some minor changes of the Rules of Procedures can be expected, for instance concerning the procedure to opt patents out of the jurisdiction of the UPC. Under the current rules, any mistake in the opt-out means it will have no effect until it is corrected. It’s under discussion however whether an exception should be made for minor mistakes, for instance in a name. Another issue still under debate is what should happen if the wrong patent number is used when registering an opt-out.

Although Kevin Mooney admitted he has had to change his predictions about the start of the UPC many times, he still pictured what may happen in the upcoming year, at least if the German constitutional complaint is not admitted or otherwise rejected. The UK may be in a position to ratify in March, with the PPA and the process of recruitment, appointment and training of judges and other court staff starting in April or May.

The sunrise period, during which patents can be opted out of the UPC, could start in October, and finally, by January 2019, the UPC could open its doors for cases, Mooney hopes.

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Preparatory Committee hopes Unified Patent Court to open its doors in 2018

Source: Kluwer Patent Blog

It is difficult to predict a new timeline for the start of the Unified Patent Court, due to the case pending in the German Federal Constitutional Court. In the meantime, the UPC Preparatory Committee is using the additional time available to prepare the functionality of the Court.

Chairman Alexander Ramsay has written this in a message on the website of the Preparatory Committee: Summing up and Looking Forward to 2018.

In his message, Ramsay explains that parts of the preparatory work for the UPC can only be concluded in the final phase of the project known as ‘provisional application’ and why this period is important.

‘The Agreement on the Unified Patent Court (UPCA) doesn’t include a provision enabling the Court to have a pilot phase during which the organisation as such is established but the Court is not yet operational. To remedy this situation the Signatory States agreed the Protocol to the Agreement on a Unified Patent court on provisional application. The protocol means that the State Parties agree to apply the institutional, organisational and financial parts of the UPCA provisionally before the UPCA enters into force.

Once the Protocol enters into force the organisation as such will therefore be created and acquire legal personality. The Administrative Committee, the Budget Committee and the Advisory Committee will be established at the start of provisional application and will then take over the responsibility of the preparations from the Preparatory Committee.

During the provisional application phase the organisation will be able to conclude necessary agreements with third parties and formalise all the preparatory work done by the Preparatory Committee. One hugely important area that cannot be conducted before the provisional application phase is the completion of the recruitment of the judges. Once the judges are appointed the two Presidents can be elected, the Presidium can be set up and the Registrar and the Deputy Registrar can be appointed.’

In September, the UPC Preparatory Committee announced it was ‘very close to the 13 required ratifications of the Protocol on Provisional Application’ and it expects that operations of the UPC will begin with close to 20 contracting states.

According to Ramsay’s message the period of provisional application needs to be between six and eight months long. ‘Looking ahead to 2018 I am hopeful the New Year will bring closure to our endeavours and the Unified Patent Court will become a reality providing benefit of growth and European competitiveness.’

For regular updates on the Unitary Patent and the Unified Patent Court, subscribe to this blog and the free Kluwer IP Law Newsletter.

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Industry call on member states to join the Unified Patent Court

Source: Kluwer Patent Blog

Ahead of the meeting of the EU Competitiveness Council, 30 November and 1 December 2017 in Brussels, a group of European companies and associations have sent a letter to EU member states urging them to ratify the Unified Patent Court Agreement and join the Protocol on Provisional Application (PPA) as soon as possible, if they haven’t done so yet.

According to the letter, the Unitary Patent system will ‘encourage investment, spur growth and create new jobs across Europe. The patent reform will substantially contribute to increased European competitiveness.

European industry has invested considerable time and effort to prepare for the patent reform, the launch of which is long overdue. (…) In signing up to the Protocol on Provisional Application, any given Member State will not only contribute to the collective realization of this crucial reform, but also provide positive signals to investors and enable itself to participate in early decision-making on Court matters. (…)

Since the advantages of the reform increase with the number of participating Member States, the broadest possible territorial coverage is desirable. Thus we also have a preference for long-term UK participation’, according to the letter (update: complete text below this blogpost).

Kluwer IP Law was in contact with Fredrik Egrelius, director of the Patent Unit in the UK of Ericsson and one of the people behind the initiative. Egrelius hopes the Unitary Patent package will start as soon as possible. ‘By sending the letters to responsible ministers before their Competitive Council meeting, we want to signal again that the package is important for European industry and must not be forgotten by the participating member states.’

He doesn’t see any reason for other countries to wait with their ratifications until there is more clarity about the situation in Germany, where a constitutional complaint has been filed against ratification of the UPCA which can lead to considerable delays – possibly up to 2020; and about Britain. In the UK the ratification procedure is well on its way, but there is uncertainty about its role in the UP system post-Brexit. Without ratification of the UPCA in both the UK and Germany, the system cannot enter into force (Article 89 UPCA).

Egrelius: ‘What we in practice want to achieve is for all participating member states to see to that they ratify the UPCA and confirm that they are bound by the Protocol on Provisional application as soon as possible. Because if other countries would wait for UK and Germany before they finalize their own national legislative process, then we would have further delays.

Even if many of the companies which have put their logo on the letters have stated essentially the same thing before, for example in the spring this year, we shall not forget that we have had recent elections in a number of EU countries this year, so we also have a number of new ministers who see the joining companies view for the first time.’

According to Egrelius, the letter is not directed at the president and/or Federal Constitutional Court in Germany, where the court asked the president not to ratify the UPCA pending its decision on the constitutional complaint: ‘I firmly want to stress that we did not at all have such an intention. On the contrary, we wanted to make clear that we respect and definitely do not want to disturb the handling of the complaint by the Constitutional Court.’

As to UK participation in the Unitary Patent system post-Brexit, Fredrik Egrelius has no doubts: ‘Of course it is feasible. If there is a will, there is a way. At Ericsson, we are working hard for UK participation. However, we still believe that the Unitary Patent system would be worthwhile without the UK, but that is clearly plan B for us.’

The letter to the EU ministers (with the exception of the ministers of Croatia, Poland and Spain, which don’t participate in the UP system) is signed by ABB, Air Liquide, Alfa Laval, BASF, Bayer, Bracco, Electrolux, Ericsson, Michelin, Novo Nordisk, Philips, Pirelli, SAP, Scania, Stora Enso, Syngenta, Technicolor, ThyssenKrupp, UCB, Unilever, Volvo Group Trucks Technology and the associations CEFIC (European chemical industry), Essenscia (Belgian Federation for Chemistry and Life Sciences industries), LIF (Swedish Association of the Pharmaceutical Industry), VCI (German chemical industry) and VDMA (German mechanical and plant engineering).

The EU presidency published a document earlier this week, which makes clear that so far 14 member states have completed the ratification procedure by depositing their ratification instrument with the secretariat of the EU Council: AT, BE, BG, DK, EE, FI, FR, IT, LT, LU, MT, NL, PT, SE. Another four member states have received parliamentary approval to ratify: DE, LV, SI, UK.

Out of the 18 member states which have ratified or received parliamentary approval to ratify the UPCA, 10 member states have expressed consent to be bound by the PPA (by signature, ratification or declaration): BE, DK, EE, FI, FR, IT, LU, NL, SE, UK.

Other than Germany (DE), two more member states which have ratified the UPCA or received parliamentary approval to ratify the UPCA must express consent to be bound by the PPA before the provisional application can start (Article 3 PPA). During the PPA, preparations for the start of the court, including for instance the appointment of judges, can be completed.

For regular updates on the Unitary Patent and the Unified Patent Court, subscribe to this blog and the free Kluwer IP Law Newsletter.

The complete text of the letter:

17 November 2017

To: Ms Heléne Fritzon
Minister for Migration, Vice Minister for Justice

cc: Ms Åsa Webber
Ambassador, Deputy Permanent Representative (Coreper 1)

Joint Industry call on Member States to join the Unified Patent Court   

Dear Minister for Migration, Vice Minister for Justice,

The introduction of the Unitary Patent and the Unified Patent Court, “the Patent Package”, is a patent reform that significantly will reduce costs and simplify procedures for obtaining, maintaining and enforcing patent protection in Europe.

These improvements will encourage investment, spur growth and create new jobs across Europe. The patent reform will substantially contribute to increased European competitiveness.

European industry has invested considerable time and effort to prepare for the patent reform, the launch of which is long overdue.

Indeed, many Member States have signed up to the Unified Patent Court. However, in order to give life to the Patent Package, a few more Member States need to join the Protocol on Provisional Application.

In signing up to the Protocol on Provisional Application, any given Member State will not only contribute to the collective realization of this crucial reform, but also provide positive signals to investors and enable itself to participate in early decision-making on Court matters.

Thus, we the undersigned companies and associations have come together to urge outstanding Member States to join the Protocol on Provisional Application as soon as possible.

Since the advantages of the reform increase with the number of participating Member States, the broadest possible territorial coverage is desirable.

Thus we also have a preference for long-term UK participation. Consequently, we also call upon outstanding Member States to ratify the Agreement on the Unified Patent Court as soon as possible.

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‘Opposition against Unitary Patent comes from fearful lawyers and critics who only have a theoretical interest’

Source: Kluwer Patent Blog

All Union law arguments against the Unitary Patent system, that are now on the table again because of the German constitutional complaint, have already been rejected in the recent past. Wouter Pors, partner of Bird & Bird, has said this in an interview with Kluwer IP Law. Pors hopes the Federal Constitutional Court (FCC) will reject the complaint and the UP system will start as soon as possible. ‘It’s like having a brand new car in the garage, but not being allowed to drive it.’

How much delay do you expect as a consequence of the procedure before the FCC against UPCA ratification?

‘Let me start by saying that I am giving you my personal views and I have to admit that, after having put a lot of effort into supporting the revolutionary improvement which I think the UPC and the Unitary Patent are, I am frustrated by the way some people are trying to create confusion or throw sand into the gears.

It is hard to predict how much delay the German constitutional case will cause. One can only hope that the Constitutional Court will take into account that 14 countries have already ratified, thereby indicating that they want the new system and the UK is consistently working towards ratification. I hope the Constitutional Court will also take into account that the CJEU has already looked at all the Union law issues 4 times until now (Opinion 01/09, the joint decision on the Italian and Spanish appeals in 2013 (C-274/11 and C‑295/11) and the two Spanish appeals in 2015 (C-146/13 and C-147/13)); all arguments that are now on the table again have basically already been rejected.

In addition to that, I am not aware of any major industry or industry association saying that they wouldn’t like to have the UPC. The sad truth is that the only opposition currently comes from lawyers who probably fear for their livelihood because they realise they can’t face the competition in the UPC system and from other critics who only have a theoretical interest. For those critics, there are no valuable patent portfolios at stake. They don’t have an interest in tech driven companies that for the majority of their stock value rely on intangibles, such as intellectual property.

Wouter Pors

In these times of uncertainty, it is easy to echo that there is uncertainty. It would have been helpful if the critics would have declared their position and motivation. I have always been clear about my position. So, it should be no surprise that I definitely disagree with the content of Mr. Stjerna’s complaints and I hope they are rejected by the Constitutional Court.’

Is the delay bad for the new system? Are there advantages as well?

‘Of course, the delay is bad. The UPC is basically ready to open for business, but now we have to wait for the outcome of the German constitutional case. Over the past years an increasing number of the major users of the patent system have become confident that the UPC will be their court of preference, as it offers substantial benefits over the current shattered national jurisdiction. Obviously, this means that they want to be able to actually start using it, but now everybody has to wait. It’s like having a brand new car in the garage, but not being allowed to drive it. Of course, this is also a disappointment for the candidate-judges.

The delay may be an advantage for law firms wo are not ready for the new system, as they can continue business as usual for some time.’

Apart from the German procedure, it seems the Brexit could also cause problems. There is a debate whether the UK can stay in the UP system post-Brexit, and if it can keep its local division and branch of the central division. In the UK however, the parliamentary procedure to complete the ratification process goes on as planned. How is this possible?

‘The UK currently is still an EU Member State and has said that it will continue to fulfil its obligations until the Brexit is a fact, which will be on 29 March 2019. A study commissioned by the UK government some years ago showed that the UPC has huge economic benefits for London. In addition, the UK has always played an important role in patent litigation in Europe and wants to continue that role. The UPC is not an EU institution, as it is based on a multilateral agreement. It is quite clear that the UK wants to continue to play an international role after Brexit, to which end it plans to conclude international agreements. Participation in the UPC is beneficial to both the UK and the continental European countries, since a strong Europe-wide system is very important for a good climate for research and development in Europe. Meanwhile, the Scottish parliament has completed all necessary steps for ratification by the end of October and the Westminster parliament can pick up the process for those final steps again as it has now appointed the members of the Joint Committee on Statutory Instruments on 31 October.

I have no doubt that there is no legal reason why the UK couldn’t stay part of the UPC after Brexit. There also is no reason to relocate the London local division or the London seat of the central division. These are not UK courts, but divisions of an international court. The fact that they – as divisions of this international court – would have to refer issues to the CJEU therefore as such doesn’t affect the UK sovereignty. I have published about this before and so have others.

Actually, most of the people who doubt that this is feasible do so without really having studied the issue. I’m always puzzled by lawyers who just say that there’s a lot of uncertainty, without really dealing with the issue. I don’t understand what purpose is served by that. When I was in Tilburg University, professor Schoordijk had a special term for that approach: “think laziness”. However, there are so many of those messages on the internet, that they could be mistaken for an actual contribution to the debate, which they are not. Actually, I have seen very few well-founded arguments why the UK would not be able to continue its participation in the UPC.

On the other hand, a continued participation in the Unitary Patent does require some additional legal measures, but this could be achieved as part of the Brexit negotiations. You need to keep in mind that the UK was one of the founding fathers of the Unitary Patent, which was only created when the EU itself was unable to come up with a solution. There is no desire to change any of the characteristics of the Unitary Patent, so the only issue is to create an additional formal legal basis to allow the UK to continue its participation. This discussion is totally different from the discussion on EU unitary rights, such as the EU trade mark; the Unitary Patent was not imposed on the UK by the EU.’

Are preparations for the UPC and Unitary Patent going on as planned at Bird & Bird, despite the German and Brexit issues? What do these preparations consist of?

‘I can’t say it’s going on as planned, as we have to adapt the time schedule all the time, but it’s certainly going on. Of course, we continue to share all the information that we can collect, since we have already been advising our clients on the consequences and opportunities of the UPC and the Unitary Patent for quite some time and we want to provide them with accurate and up-to-date information. We’re also working on a comprehensive book and on some new software tools.

The biggest challenge however is how we will organize our patent litigation practice in future. The UPC will be a real game changer. Firms that do not prepare may not survive. The message that I get from industry more and more is that patent litigation teams that operate independently on an office-by-office basis without an integrated European-wide approach will not be sufficient anymore. According to those views, teams should not be organized by geographic location, but based on expertise and client focus.

If for instance you need to litigate an electronics case in Budapest, you shouldn’t be solely dependent on the people available on the ground; you need to have them, but in my view, they should be integrated into an international dedicated team. You should realize that in the eyes of scientists (such as inventors) lawyers are really strange animals in this respect. Lawyers are used to practice national law and are therefore organized on a country-by-country basis, but scientists of course are not. There is no such thing as French physics, so there is no purpose to make national divisions in research and development in a multinational company.

For lawyers however, this is a totally new concept. At Bird & Bird we have the advantage that we are aware of this and we are discussing it. I don’t pretend that we have already completely solved the issue nor that we have already completely re-created ourselves as the truly European patent law litigators who have abandoned their national law roots, but we’re discussing, and we will be ready to deliver when the UPC opens and the clients demand a new approach.

By the way, I’m very curious what my competitors from the other patent law firms have to say to this.’

Are you still active at the Training Centre in Budapest? If so, can you give an impression of your experience there?

‘There have been two extensive courses of training for judges with relatively little experience in patent litigation. This was sufficient to cover that group of candidates as it existed at that time. For me, this was a very positive experience, since we lectured to a group of bright judges with a keen interest in international patent law. Next to the official subject that I taught, I had in-depth discussions on some of the more complex issues of patent law during the coffee and lunch breaks. I’m looking forward to seeing those judges participate in UPC panels.

The next stage is the educational program on the UPC procedures itself, but that will only start when there is more clarity on the actual appointments and the start date. Basically, the provisional application phase is needed for that.’

For regular updates on the Unitary Patent and the Unified Patent Court, subscribe to this blog and the free Kluwer IP Law Newsletter.

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‘Future judges of the Unified Patent Court will be very motivated to make the court work’

Source: Kluwer Patent Blog

In the first period of functioning of the Unified Patent Court, the judge-rapporteur – who has important powers in the new system – should as much as possible revert issues to the panel of judges as a whole. This is beneficial for the system and can prevent forum shopping, according to the Belgian judge Sam Granata*. He has been involved for years in the creation of the Unified Patent Court (UPC) and is co-author of the book ‘The Unitary Patent and the Unified Patent Court’, which was published earlier this month by Wolters Kluwer. In an interview with Kluwer IP Law, he also discusses the consequences of the Brexit and the German Constitutional complaint.

Could you give a short impression of the process of establishing the UPC?

‘From its outset, this process – and this before I was active in the Rules of Procedure and Mediation and Arbitration working-group – was and is led by specialist patent lawyers and judges. This was in particular the case when the Rules of Procedure were drafted.

The aim was to set up a court system which could repair shortcomings of the existing system and at the same time integrate national elements which had proven their value in patent litigation.

For the founding fathers of the UPC Rules of Procedure and from a legislative point of view, it was a difficult task to design this new judicial system. On the one hand it couldn’t be too revolutionary for its users (it had to provide them the confidence they needed); on the other hand it had to result in a comprehensive framework, streamlining national elements with a civil and common law background.

Designing such a framework was an intellectual exercise for the drafters of the Rules of Procedure, during which these national elements were examined and re-examined in order for them to interact smoothly. If the designers altered one rule in the framework, they had to be aware of potential effects on interacting rules.’

The articles in the Unified Patent Court Agreement (UPCA) relating to the structure and procedure of the Patent Mediation and Arbitration Centre (PMAC) are very limited. How did the working arbitration and mediation group handle this?

‘Developing a flexible structure and providing a first draft of mediation and arbitration rules (which will be re-examined by the PMAC after its establishment and before actual publication) in line with the duties of the judge-rapporteur to try and reach settlements between the parties, was a complicated but worthwhile task.

Most of the member states had alternative views on the role of alternative dispute resolution (ADR) within a court system and the importance which should be awarded it.  I believe the scarcity of articles in the agreement was used to its advantage to design a flexible ADR-centre, making the UPC as whole into a unique real one-stop-shop for patent dispute resolution.’

Are the recent delays caused by the Brexit and the recent German constitutional complaint bad for the UP system?

‘Any delay hinders the momentum. However, the delays, at least that of the Brexit, created openings for states to try to adhere to the agreement (and I specifically refer to Spain).  Unfortunately, this did not materialize, but at least the opening was there. The delay may have as a consequence that when the UPC is finally established, more states will have ratified the agreement.

Regarding the German constitutional complaint – and as the agenda to deal with that complaint is not public for the moment – I cannot foresee whether this action is bad for the system as such. Should the complaint be dismissed, I think the system is that robust that this delay will not hinder its establishment. I should point out in this regard that the stakeholders of the UPC, and especially the Preparatory Committee, were and still are very effective in keeping the momentum alive.’

Can the UK still participate in the Unitary Patent system despite the Brexit?

‘As I believe that the UPC is an international court based on an international agreement, I believe the Brexit would not hinder the participation of the UK, if the latter ratifies the agreement.

Of course, the position of the CJEU may demand some creative thinking, but I believe that solutions can be found.  Should the Brexit take place, probably meaning that UK judges will not be part of the CJEU, one could think for instance of a system of a (UK) enlarged CJEU in cases involving European patents (for which the UPC is competent) and Unitary Patents.’

Recently it became clear what arguments are behind the German Constitutional complaintagainst the UP system. The first is about the voting procedure in German parliament, the other arguments concern democratic deficits and deficits in rule of law with regard to the regulatory powers of the organs of the UPC; the independence of UPC judges and irreconcilability of the UPC with European Union law. Do you think the complaint has any chance of success?

‘First of all, I would like to point out that it is not appropriate to have an opinion regarding issues which colleague-judges have to decide upon or have decided upon. Secondly, it goes beyond my abilities as a Belgian judge to have an opinion regarding a complaint based on German constitutional law.

The issue regarding the democratic deficit and deficits in rule of law regarding the regulatory powers seems similar to allegations regarding the structure and the powers of the administrative powers of the EPO and the complaints are probably not that revolutionary (see also this post on the Kluwer Patent Blog).

Regarding the independence of the judges related to the non-automatic and non-guaranteed re-appointment of judges of the UPC, I can only refer to certain non-automatic and non-guaranteed renewable positions which judges take in our national systems (e.g. Belgium where juges d’Instruction are appointed for one, three and later five-year terms).’

As a judge, do you see ‘weak spots’ in the system?

‘The so-called weak spots are at the same time its advantages. UPC judges will have to reach pragmatic solutions for legal procedural issues.

On the other hand, such pragmatic approach, together with a lack of legislative preparatory work, might make it burdensome to decide on the lawfulness of a specific rule.  Rule 1.1. of the Rules of Procedure makes it very clear that the court shall conduct proceedings in accordance with the UPCA, the Statute and these Rules and that in the event of a conflict between the provisions of the UPCA and/or the Statute on the one hand and of the Rules on the other hand, the provisions of the UPCA and/or the Statute shall prevail.

Further, on a procedural level, important powers have been awarded to the judge-rapporteur. In order not to promote “division” shopping, or should I say “judge-rapporteur” shopping, it would be beneficial for the system as such that, at least until some legal certainty is reached, the judge-rapporteur reverts issues to the panel as a whole, unless of course the dynamics of the proceedings would not allow this.

Generally, I think any legal system is alive and not static. Any legal system, and specifically its rules on certain procedural issues, are questioned even if they exist more than decennia. The UPC is and will not be different. I believe that the rules of the UPC were drafted in such a way that the court is in a position to answer any legal procedural issues with sound arguments.’

What will it be like for UPC judges to start working for a completely new court?

‘I believe that the mixture of an international and multi-lingual environment, the requested managerial efforts, the specialized field of law and the pioneering role the judges have to play, will create a very exciting environment.  It would seem that most of the judges applying for a position have a strong will to work in such environment and are motivated to make the court work.

I believe that bringing together such judges will lead to a court in which its users will have a strong confidence. And it is this confidence that is essential. I agree that for the moment there exists some uncertainty regarding the quality of judgments and whether substantive decisions will be in line with the existing doctrine, but having the right judges in the right place will take away a lot of this uncertainty.

An important task for the judges will be to try to take off their national glasses entirely and increase their openness to alternative approaches by fellow judges. The UPC must prove to be the international court it is. A court in which neither the nationality of its judges neither the language of the proceedings play a role.

We might expect, at least in the beginning years a certain couleur locale, though this will fade away the more case law develops.  After a while, the couleur localeshould be limited to whether biscuits, panini, croissants or Pretzels are being available in the surroundings of the local, at the local, regional or central division during a recess.’

*The answers provided by Mr. Granata are personal views and opinions. In no way does he have the capacity nor authority to bind the UPC and/or any of its organs.

Pieter Callens, Sam Granata; The Unitary Patent and the Unified Patent Court. Available at Wolters Kluwer, September 2017.

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Judges will have to help build the Unified Patent Court – and the IT system must work!

Once the UPC opens its doors, expectedly on 1 December 2017, a whole new European patent system will start taking shape. An exciting challenge for the future judges of the court, who will have to bring into practice a set of brand new Rules of Procedure and find common ground despite their different backgrounds and national legal traditions. And, very importantly as well, they will have to rely on a completely new e-system.

During the Unitary Patent Package conference, earlier this month in Amsterdam, patent judge Dr. Klaus Grabinski of the Federal Court of Justice in Karlsruhe, Germany, told Kluwer IP Law he is looking forward to the new Unitary Patent system, which he thinks ‘is an important project for the whole of Europe’.

Judges will face other challenges than they normally do

In a panel at the conference, he explained judges will face other challenges than they normally do in the existing specialized patent courts in their home countries. The first period of the UPC will be demanding, he thinks: ‘Judges will have to develop the so-called judge craft and set up harmonized standards for judgments, orders and other court decisions. In France, decisions of the judges can be very short, for instance, in England pretty long and in Germany rather dogmatic. Many issues should be decided on and harmonized.’

We need uniformity

Grabinski and his French and Belgian colleagues Marie Courboulay and Sam Granata, who were also at the conference in Amsterdam, agreed there is an important language issue that still needs to be addressed by the UPC Preparatory Committee. Grabinski: ‘Most proceedings will probably be in English. But even though many judges speak that language quite well, it will not be easy for them to draft a judgment. Moreover, we need uniformity. All words used by judges have to have the same meaning.’ Grabinski thinks a specialized translation service is indispensable to correct and harmonize concept judgments, which then would have to go back to the judges for a final check before they are issued. Legal language should be part of the training for UPC judges, he thinks.

‘The case management system must function properly from day one’

Another challenge for the new Unified Patent Court is of a different nature, but no less important, according to Grabinski: ‘The case management system must function properly from day one. The whole litigation system at the UPC is going to be electronically based. Paper work should be an exception. So the success of the court will also depend on the question whether the e-system is going to work properly right at the start of the court.’

A lot of stress tests have already been done. ‘They were included in the work plan. But once the judges have been appointed, currently scheduled as from September, these will also do extensive testing and agree among themselves how to operate in the IT system.’

The tight schedule only concerns the full-time judges

Grabinski acknowledges that the time schedule is tight and judges, once appointed, will have little time to prepare for the first proceedings, which are expected in December. However, he points out, most judges will be part-time judges. ‘The tight schedule only concerns the full-time judges. For them it will probably be quite a challenge to deal with all the nitty-gritty things they will face before the court is going to start.’

*101 Rules of Procedure, 1. ‘…the judge-rapporteur shall make all necessary preparations for the oral hearing. He may in particular, where appropriate, and subject to the mandate of the panel, hold an interim conference with the parties (…) 2. The judge-rapporteur shall have the obligation to ensure a fair, orderly and efficient interim procedure

Written by Kluwer UPC News blogger
Source: Judges will have to help build the Unified Patent Court – and the IT system must work!

 

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UPC – Provisional Application

16 January 2017

The Preparatory Committee is now working under the assumption that the Provisional Application Phase (PAP) will start end of spring 2017, presumably in May, and that the Agreement on the Unified Patent Court (UPCA) can enter into force and the Court become operational in December 2017. The PAP will mean that the organization as such will be established including the start of operation of the UPC’s formal governing bodies. It will also mean that judicial interviews can begin and appointments eventually confirmed. The start of the sunrise-period for the possibility to opt out European patents is now planned for early September 2017 which will provide a minimum of 3 months for patent holders who wish to opt out their patents to do so before the Court becomes operational.

The above timetable is conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable. The most important factors in meeting these dates is the necessary ratifications of the UPCA and accession to the Protocol on Provisional Application. If these are not achieved the time-plan will be disrupted.

There will be a final Preparatory Committee meeting in early March 2017, and in due course, updates and more specific details of the Committee’s work programme will be published on this website. Those who have applied for judicial appointments will be contacted separately.

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The next steps for UPC Agreement to entry into force in 2017

Interview with Francesco Macchetta, Director Intellectual Property, Bracco Group, Italy. We asked Francesco about the announcement on ratifying UPCA by The UK Government and about problems with the systems that maybe will appear after UK will leave the EU.

In an interview on 21 November 2016 Francesco outlined his clear preference for UPCA entering into force, including UK.

Our question: what do you think after the announcement on ratifying UPCA by The UK Government?

Well, I can only be very happy! I am confident we’ll see the system starting soon with the widest possible territory coverage. This is in my opinion very good news for technology innovators in UK, EU and elsewhere as well. I am convinced the new system will represent an epochal change and system improvement for innovators in Europe and worldwide.

How soon do you see the new system coming into force ?

Of course, I have no inside knowledge about it, but I am confident it will be a matter of really a few months and we’ll have the ratification of UK, DE and a few other countries. The system will then already enter into its provisional working phase before Summer and fully operational before the end of the year.

Do you see any problem in UK remaining in the system even after UK possibly leaving EU ?

I am with those “minimalists” that are convinced the system should continue with the UK as part of it, even after they possibly leave the EU, for the reasons already implied in the official announcement, i.e. it is an international treaty and it came into existence in its current form because of intense efforts, input and participation from UK both at the professional and administrative level. And last but not least, it’s expected to be economically beneficial to UK and EU as well.

As a “minimalist” I am with those who believe that for UK to continue in UPC (also when it will possibly leave EU) no cumbersome Treaty revision is necessary, but possibly just a decision/clarification note of the Administrative Committee for UPCA on formal/definition level (e.g. with a possible clarification/amendment to Art 2(2) to the effect that the definition of “Member State” applies not only to “Member States of the European Union” but also to something like “former Member States of the EU that ratified the Treaty when they were still members of the Union”…).

Thus, any need for broader UPCA revision or additional Protocol on termination?

Well, of course I have heard a few wishes to take this opportunity to broaden UPCA to include “non EU Member States“ tout court. While I believe (for what my opinion may matter here) that such a broadening is compatible with ECJ opinion 01/09, I strongly believe that it is not advisable to tackle this issue now for many reasons that ultimately involve delaying entry into force of the system.

Let’s start with the system as currently envisaged, make it work properly as expected, and leave optimizing it, e.g. by broadening to EPC Member Countries which are not EU Member Countries, to a later date/future revision.

What about the Unitary Patent Protection: since it is provided for in an EU Regulation, do you expect it to come to an end for UK? should it leave EU?

On the Unitary patent protection (UPP) too, I am among those who do not see any real problem in case UK leaves EU. In fact, in such a situation, the content of Regulation 1257/2012 (that provides for UPP) can stand anyway on “its other leg”, i.e. “a special agreement under art 142 EPC” according to Art 1(2) of the Regulation itself. Once more, the legal basis for the system to continue is provided for by an international agreement not part of EU law (EPC i.e. the “European Patent Convention”), so in principle not affected by UK possibly leaving EU. In such a case maybe some minor additional adjustments at national level are necessary e.g. to accommodate for the current translation arrangements to continue also thereafter.

Indeed, I hope that the political will of UK and the EU partners will go in this direction. Also the less optimal solution centred on UPP being no longer available for UK after UK leaves the EU is in my view workable, but more costly to everyone, including UK innovators. I would not elaborate more now on these “less optimal” possibilities as I am convinced that it will be in the best interest of all players to follow the route mentioned above as special agreement under EPC.

As a conclusion, can you summarize in one sentence you thoughts about the future of the new system?

Well, in conclusion, I am confident we’ll see the UPCA operative before the end of this year with a chance of proving its value to the innovator community in Europe and worldwide in the few coming years.

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Judge Grabinski: ‘Involvement UK is very positive for Unified Patent Court and Unitary Patent’

There is a lot of enthusiasm among German patent judges, in particular but not only the younger ones, for the Unitary Patent system and the Unified Patent Court, according to Dr. Klaus Grabinski, Judge of the Federal Court of Justice of Karlsruhe in Germany and speaker of the Unitary Patent Package Conference. In an interview with Kluwer IP Law he welcomed the news that the UK will ratify the UPC Agreement. He hopes the German ratification, which is indispensable for the start of the UP system, will not be delayed by the upcoming elections in his country.

Were you pleasantly surprised to hear the UK will stay in the UP system and ratify the UPC Agreement?

‘After the Brexit referendum in UK on 23 June 2016 there was a lot of uncertainty about the consequences for the UPC und UP project. From a legal point of view, it soon became clear that the UK is not only entitled to ratify the UPC Agreement as long as it is a Member State of the European Union but will also be able to remain a Contracting State of the UPC Agreement after Brexit will have come into effect if respective arrangements are set out in the Withdrawal Agreement under Article 50 Lisbon Treaty.

Dr. Klaus Grabinski
Dr. Klaus Grabinski

However, it was not clear at all whether the UK government would be prepared to go down this path. Therefore, also a so called “plan B” was discussed, which essentially meant an option to have the UPC and the UP project without UK in case UK would not show any interest to join in due term. After the confirmation of the UK government of 28 November 2016 that it will proceed with its preparations to ratify the UPC Agreement the situation has been clarified to a large extent. This recent development is very welcome.’

Do you feel the UP system could have survived without the UK?

‘My preference has always been to have the UK on board of the UPC and UP project. The UK government contributed to the setting up of the UPC system, in particular with regard to the IT system and the electronic case management system. UK judges and lawyers played an important role in the drafting of the UPC Agreement, the Rules of Procedure and other rules that will govern the UPC system. And, of course, it will make the UPC more attractive to stakeholders if its decisions will also cover the UK market.’

Is there much enthusiasm among your German colleagues for the new court?

‘The answer to your questions depends on what you consider to be “my German colleagues”. When you give it a narrow interpretation meaning only German patent judges my feeling is that there is a lot of enthusiasm, in particular but not only among younger patent judges. When your understanding of the term is a broader one meaning it covers also German IP lawyers and patent attorneys you will find enthusiasm but also scepticism depending on whom you ask. In particular, some lawyers or patent attorneys that have mainly SMEs as clients consider the UPC ceilings of recoverable costs to be too high.’

Does the fact the UK judges may now be UPC judges strengthen the position of the court?

‘UK patent judges are well known for their competence in dealing with IP cases in general and patent cases in particular.  Judges from the Continent can learn a lot from their experience but this is no one way street. It will go both ways in order to ensure a consistent and reliable application of material and procedural law. Having UK judges on UPC panels will certainly strengthen the position of the UPC.’

What issues do you see in the EU Regulations setting up the UP system and in the UPCA that will have to be taken care of so the UK as a future non EU member can stay in?

‘This is a rather complex matter and will have to be explored more in detail when negotiations under Article 50 Lisbon Agreement will have been triggered by a respective notification of the UK. One issue will certainly be an amendment of the UPC Agreement which currently provides that the UPC is a court common to the Contracting Member States. However, such an amendment would not necessarily need a revision of the UPC Agreement but could be implemented by the Administrative Committee in order to bring the Agreement into line with a future Withdrawal Agreement as part of Union law.

Another problem that will have to be addressed is the issue of jurisdiction and enforcement since the Brussels I Regulation will not be applicable on UK when it won’t be an EU Member State any more. And also Unitary Protection will have to be extended to the UK under Art. 142 European Patent Convention since Regulation (EU) No 1257/2012 will no longer have effect with regard to the UK territory.’

Is it a problem that the location of one of the branches of the Central Division is in London, once the UK will no longer be an EU member?

‘No, this will be one of the easiest issues to be dealt with. The London section of the Central Division may remain in London when UK will remain a Contracting State of the UPC Agreement. There is no legal requirement that it has to be located on EU territory.’

According to the Opinion of Brick Court Chambers, the UK – if it wants to stay in the UP system will have ‘to submit to EU law in its entirety as regards proceedings before the UPC. It would also need to sign up to an appropriate jurisdiction and enforcement regime (such as the Lugano Convention).’  Prof Dr Ansgar Ohly of the Ludwig-Maximilians-Universität of Munich disagrees and thinks such an agreement is not necessary (please see this post on the Kluwer Patent Blog).

What is your view?

‘The primacy of EU law, the obligation to request preliminary ruling from the CJEU and the liability for damage caused by infringement of EU law are all obligations under the UPC Agreement. On this background it is not clear to me why there should be a need for a further agreement involving the EU to confirm all of this. However, as I already mentioned the issue of jurisdiction and enforcement have to be addressed since the Brussels I Regulation will no longer be applicable on UK once it has left the EU.’

german-flagApart from UK ratification, the ratification by Germany is also indispensable for the start of the UP system. What can you tell about the ratification procedure in your country?

‘The ratification of UPC Agreement by Germany requires a law that has to be approved by the Bundestag and the Bundesrat and is signed by the German President. A respective draft law of the Federal government has been published on 27 May 2016. The Bundesrat decided that it will not raise objections. The draft law is now pending before the Bundestag where parliamentary readings could take place early next year. Time, however, might run short since there will be parliamentary elections in the autumn of 2017 in Germany which could cause delay, but we will see.’

When do you expect the UP system to launch?

‘This will not only depend on the preparatory work that has already been finished to a large extent but also on the further development on the political level which makes it difficult to answer that question. With this reservation I would expect the system to fly sometime between autumn of 2017 and summer of 2018.’

Dr. Klaus Grabinski is one of the speakers at the Unitary Patent Package Conference, 9 and 10 February 2017 in Amsterdam.

Written by Kluwer UPC News blogger
Source: Judge Grabinski: ‘Involvement UK is very positive for Unified Patent Court and Unitary Patent’


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