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Start of provisional application phase Unified Patent Court is top priority for Preparatory Committee

The Preparatory Committee of the Unified Patent Court is delighted with the UK’s decision to ratify the UPC Agreement and will publish a revised roadmap for the start of the Unitary Patent system as soon as possible. Chairman Alexander Ramsay is a happy man, he told Kluwer IP Law.

Monday’s announcement of Minister of State for Intellectual Property, Baroness Neville Rolfe, that the UK will ratify the UPC Agreement despite the Brexit vote, has been qualified as surprising and even sensational. Quite a few people thought that, even if there were no legal objections, politically it would not be feasible for the UK to ratify the UPC Agreement. The UP system implies the acceptance of the supremacy of EU law, whereas the Brexit vote was a vote for less EU, not more. European Commissioner Elzbieta Bienkowska, the EPO and the Preparatory Committee, among others, have welcomed the decision.

Ramsay‘I was of course very happy.

This is the best possible option for the project. A UK participation makes the UPC/UPP stronger and more attractive’, Alexander Ramsay, chairman of the UPC Preparatory Committee said in reaction to questions by Kluwer IP Law. He declined to get into detail about what happened behind the scenes, where a lot of silent diplomacy has been going on since the Brexit vote of 23 June 2016.

‘This has been a decision of the UK Government. I and others have of course been in close contact with the UK colleagues and hope that we have been perceived as constructive and supportive partners’, Ramsay said. He believes that ‘one of the basis of the decision is that the UK government see the UPC/UPP as beneficial for British businesses.’

Ramsay doesn’t know yet when the UK will be ready to ratify, he said.

A lot of work will be done in the coming months: ‘The UK will now continue with preparations for ratification and is at the same time engaging fully in the work of the Preparatory Committee to facilitating the last preparations needed to bring the UPC into operation as soon as possible.

From the Committee’s side we will now be aiming at enabling the provisional application phase to start as soon as possible. This depends not only on the UK ratification of the UPCA but also on other Member States’ approvals of the Protocol on Provisional Application*. I expect the Committee to communicate a time-plan for this as soon as possible.’

The protocol will allow some parts of the UPC Agreement to be applied early.

This includes final decisions on the practical set up of the Court, for example, 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. Ramsay: ‘The process of the selection of the UPC judges is ongoing and the pre-screening of the candidates is almost completed. The final selection cannot be completed before we enter into the provisional application phase. It is first when we enter into provisional application that there will be an international organisation – the UPC – with the legal capacity to formally employ judges.’

Ramsay regards the possible need of changes to the Unitary Patent system and the UPCA due to the UK leaving the European Union at some point, premature to discuss: ‘This needs to be looked into further. If there is a need for any amendments of the UPCA this can, after the entry into force of the UPCA, be taken care of by the simplified procedure that is foreseen in the Agreement (article 87) – by a decision of the Administrative Committee of the UPC.’

Not only the UK, but also Germany will have to ratify the UPCA before the Unitary Patent system can start functioning.

Alexander Ramsay doesn’t expect any delays there. ‘As far as I know the German ratification process is progressing and I am confident that we will see also a timely German ratification of the Agreement. So I expect the UP system to start functioning during 2017.’

*The Protocol enters into force (article 3(1)) ‘the day after 13 Signatory States of the Agreement on a Unified Patent Court including Germany, France and the United Kingdom, have either ratified, or informed the depositary that they have received parliamentary approval to ratify, the Agreement on a Unified Patent Court and have

  1. signed in accordance with Article 2(2)a. or signed, and ratified, accepted or approved this Protocol in accordance with Article 2(2)b.; or
  2. declared by means of a unilateral declaration or in any other manner that they consider themselves bound by the provisional application of the articles of the Unified Patent Court Agreement mentioned under Article 1 of this Protocol.’

So far nine states: Germany, France, the UK, Denmark, Hungary, Luxembourg, Romania, Sweden and Slovenia have signed (art 3 (1)a) the Provisional Protocol (link). However, in four of them: Germany, the UK, Hungary and Romania, there is no parliamentary approval yet for the UPCA.

Two states, the Netherlands and Finland, have declared they consider themselves bound by the Protocol (art 3 (1)b). Belgium and Malta have announced they will use this route as well and will declare themselves bound by the Protocol as soon as the UPC Preparatory Committee knows a date of when it can start.

Bulgaria, Austria and Portugal have completed the ratification of the UPCA, but they haven’t signed or declared themselves bound by the Provisional Protocol.

Written by Kluwer UPC News blogger
Source: Start of provisionel applicationphase Unfiedpatent Court is top priorityfor Preparatory Committee

Unitary Patent Package

Check out the program of this conference. The Unitary Patent Package Conference, 9 and 10 February 2017 in Amsterdam.

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UK signals green light to Unified Patent Court Agreement

uk-vlagThe UK government has confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement. This is part of the process needed to realise the Unitary Patent and Unified Patent Court (UPCA). Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way – with a single patent and through a single patent court.

The court will make it easier for British businesses to protect their ideas and inventions from being illegally copied by companies in other countries.

UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:

The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option.

 

As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market – and let European businesses do the same in the UK.

 

But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.

 

Following the announcement today, the UK will continue with preparations for ratification over the coming months. It will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible.

Source: Press release, GOV. UK. Intellectual Property Office and Baroness Neville-Rolfe DBE CMG, published at 28 November 2016.

Unitary Patent Package Conference

Because of this the Unitary Patent Package Conference 2017 will be very interesting to hear and discuss the last steps on the introduction of the Unitary Patent and Unified Patent Court.

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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?’

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2016: Countdown to the start of the Unified Patent Court

The German ratification of the Unified Patent Court (UPC) Agreement will most likely be postponed until September 2016 and be decisive for the Unitary Patent (UP) system to go live. Wouter Pors, partner of law firm Bird & Bird, has said this in an interview with Kluwer IP Law. Wouter Pors is also one of the speakers at the Unitary Patent Package conference. Thirteen ratifications are needed for the new European patent system to start functioning, including those of France, the UK and Germany. So far eight countries, including France, have ratified.


The UPC Preparatory Committee envisages to end its work by half 2016. What needs to be done before that moment?

Wouter-Pors2‘The Rules of Procedure of the Unified Patent Court are ready, but for the court fees and the recoverable costs. That now is the most important issue, which will be resolved before spring. The Preparatory Committee aims to have all the organizational, financial and other issues ready by mid-2016. At that point the Protocol to the UPC Agreement, which allows some parts of the UPC Agreement to be applied early, should enter into force. This means that the Administrative Committee of the UPC will take over. Like the Preparatory Committee, it will consist of representatives of the Contracting Member States, probably even the same persons.

The main open issue for the Administrative Committee is the selection and appointment of judges, followed by their education and training. The final selection needs to be done under the Protocol, which leaves only the last months of 2016 for the educational program. That is quite a challenge, but many patent experts have volunteered as teachers.’

Many countries have announced they will have local or regional divisions, and there are central divisions as well, of course. Will these all have been set up physically by 2017?

‘The most important ones certainly will be. A number of countries have already selected the necessary buildings. The Netherlands are working very hard to have the division in The Hague ready on time. I think being ready when the court opens is crucial for the future success of any division.’

In a recent IAM report, it was pointed out that so far there have been no signs from Germany when it will ratify the UPC Agreement. Is Germany, one of the two remaining member states whose ratification is obligatory, going to be a stumbling block for the entry into force of the agreement?

‘No, the German ratification will most likely be the one that is used for the proper timing of the system going live. If the court is to open on 1 January 2017, Germany should deposit its ratification in September 2016.’

The UK is also one of the states which will have to ratify before the UPC can start functioning. In the meantime, a UK referendum on membership of the EU may be held in 2016. If UK citizens opt for a Brexit, what will be the consequences for the Unitary Patent system?

‘If all goes well, the UK will have ratified the UPC Agreement before that can become a reality. Of course, if the UK leaves later on, there will need to be some important changes to the system.’

Quite a few countries (Bulgaria, Cyprus, the Czech Republic, Greece, Hungary, the Slovak Republic for instance, according to an epi report) don’t seem ready at all for ratification of the UPC Agreement. Is this a problem?

‘Some of these countries seem reluctant to ratify, as they fear the new system will negatively impact their national industry. In the Czech Republic for instance, the largest domestic proprietor has 91 European patents validated in the country, number 10 only has 7. The UPC court fees are much higher than their national court fees. These countries currently have only a few patent disputes. Some, like Bulgaria, have none.

However, Europe-wide and global patent disputes can be settled without the participation of those countries. If for instance a medicinal product or a smart phone cannot be sold in the UPC jurisdiction, there is no viable business case for selling such products only in the EU Member States that do not participate in the UPC. The system will not be stopped nor slowed down by these countries not ratifying. It is hard to predict what the effect on their national economies will be, but is seems likely that multinational innovative companies will then be reluctant to invest in research and development in such countries. Rather, they will view them merely as a sales market.’

Critics have said the UPC is pro-claimant and pro-patent holders and the swift procedure for instance will cause problems for defendants, particularly SMEs. Is their criticism justified?

‘The substantive provisions of the UPCA are quite balanced and the UPC itself is also expected to take a balanced view. The procedural rules are somewhat favourable to claimants, as they can choose the division and the language. However, the rights of defendants are guaranteed sufficiently. The most important difference is that the claimant can take his time to prepare his case, whereas once litigation has started, all parties are bound to strict deadlines (including the claimant). This however is not an effect of the UPCA or the Rules of Procedure; it applies to any system that has strict deadlines. Such deadlines are necessary to obtain a result within a reasonable amount of time. It works in favour of the patent holder in an infringement action, but against him in a revocation action.

For an SME which is only active in one country, the system will be more expensive. That will not be the case for SMEs that operate on an international level. Besides, I expect that it will be easier to obtain funding for technology that is protected by a Unitary Patent, so start-ups may also benefit. They should always make a good assessment of their freedom to operate anyway.’

What will be the situation a year from now?

‘The court will be fully operational. The opt-out register will contain many thousands of patents, but nevertheless I expect numerous revocation actions to be filed with the Central Division as soon as it opens. Infringement actions will follow soon afterwards, first in the divisions in those countries that also handle a lot of patent cases in their national courts. Everybody will be following the developments very closely in order to decide whether they prefer the UPC over the national courts.’

Written by: Kluwer UPC News blogger
Source: ‘2016: Countdown to the start of the Unified Patent Court’

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Alexander Ramsay about the Unitary Patent and the Unified Patent Court: the last steps before the introduction

Prior to the Unitary Patent Package Conference we have interviewed Alexander Ramsay, Chairman of the Preparatory Committee of the Unified Patent Court and Deputy Director at the Division for Intellectual Property and Transport Law, Ministry of Justice in Sweden. Alexander shares his knowledge with us about the status of the Unitary Patent and the Unified Patent Court. Which last steps need to be taken before the introduction and what are the latest developments?

 

What is the status and when do you expect the introduction date?

RamsayThe introduction date will depend on two things, the conclusion of the preparatory work and when the required no. of ratifications is reached. The Preparatory Committee is focusing on the first and is now doing its utmost to conclude the preparatory work by mid-2016. This will then be followed by a period of provisional application of at least 6 months whereafter the UPC Agreement can enter into force and the Court become operational. However to start provisional application 13 Member States, including France, Germany and the United Kingdom, will need to ratify or at least get parliamentary approval to ratify the Agreement.

What are the latest developments of the Unified Patent Court?

During the fall the Rules of Procedures where agreed by the Preparatory Committee. However they will need to be amended when the Committee agrees on the court fees and the ceilings of the recoverable costs. The Committee has conducted a consultation on the court fees and the ceilings of the recoverable and is now considering the outcome and working on an adjusted proposal. This is expected to be agreed in the Committee at its next meeting in the end of February. The development of the IT system is going as planned and the team has conducted a number of workshops during the fall. The team is expected to hand over the IT system in the beginning of 2016. It will of course continue to be tested, fine-tuned and adjusted.

Latest news on the selection and training of the Judges?

At the December meeting of the Committee the suggested design of the judicial recruitment and training process was presented to the Committee. The presentation was followed by a debate and the issues will now be further elaborated by the working group. The design of the recruitment procedure is a crucial part of the preparatory work, not only for the actual recruitment, but also for the training of the future judges. This is a highly prioritized work-stream and the Committee will revert to the issue at its next meeting . After the next meeting it is expected that further clarity can be provided. Those individuals who took part in the pre-selection exercise in 2013 and anyone who is interested in judicial appointments should follow developments on the Preparatory Committees website for further updates.

Unitary Patent: latest developments on the practical issues, implementing rules and costs/fees?

The Select Committee is likely to be able to conclude its work in December 2015 on the level of the renewal fees, the distribution of income from the renewal fees and the implementing rules. This is indeed very positive, in particular when taking into account that the decision means an attractively low renewal fee level corresponding to the current accumulated fee level of Germany, France, the United Kingdome and the Netherlands – True TOP 4!

Protocol on the provisional application of UPCA

The UPCA doesn’t include a pilot phase. That means that the Court needs to be functional on the day of the entry into force of the Agreement. This is a huge logistical problem since before that date there would be no international organization with a legal capacity to take all the necessary decisions. The solution to this problem is establishing a period under which the organizational, financial and institutional provisions of the UPCA can be applied provisional – provisional application. This would enable us to formally establish the organization and all the formal organs of the Court. They will then be able to take all decisions in the good order prescribed by the Agreement, e.g. employ judges, form a Presidium and elect the two Presidents! It will also allow the judges to prepare and test run all the systems in good order before the entry into force of the Agreement. During provisional application it will also be possible to file opt-outs at the Registry. This will allow the opt-outs to be effective from the first day of the entry into force of the Agreement.

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Swift procedure Unified Patent Court may put a lot of pressure on defendants

Prompted by the upcoming Unitary Patent (UP) and Unified Patent Court (UPC), a group of European patent attorneys decided in 2013 to create the European Patent Litigators Association (EPLIT), ‘promoting fair patent litigation in Europe’. Publisher Kluwer IP Law spoke to its president, Koen Bijvank. ‘It is unpredictable how the market for patent litigation will change with the advent of the UPC.’ Koen Bijvank is also one of the speakers at Unitary Patent Package.

Why was EPLIT created?

Koen-Bijvank 150x150‘EPLIT wishes to contribute to making the UPC a success. This is important for our members’ clients and for the future of our profession. European Patent Attorneys (EPAs) who want to litigate before the UPC need an additional qualification, The European Patent Litigation Certificate (EPLC). As not all EPAs will become active before the UPC, it means a new profession will effectively be created. EPLIT wishes to be a platform for EPAs having a litigator certificate. Other patent attorneys, as well as lawyers (solicitors, attorneys-at-law) are welcome to join as associate members. Currently we have about 170 members, including voting and associate members.’

According to the website, EPLIT wants to promote user-friendly, fair, efficient and cost-effective patent litigation. What has EPLIT’s role been so far in achieving this?

‘EPLIT has made contributions to the various public consultations organized by the UPC Preparatory Committee. Also, two of EPLIT’s board members are member of the Expert Panel of the Preparatory Committee.’

Do you feel the UPC will be user-friendly, fair, efficient and cost-effective?

‘The system will be based on a fully electronic docketing system. This is currently being tested. Early impressions are promising and indicate that the system will be easily accessible and thus user-friendly.

Whether the UPC will be fair will depend to a large extent on the quality of the judges. It appears that many of Europe’s most experienced patent judges will apply for a position as UPC judge. If these judges are able to find common ground on their approach to substantive patent law, the system should at least be as fair as patent litigation in Europe is nowadays. In my view the signs are very good for the UPC system in this respect.

As to efficiency, the draft Rules of Procedure contain many quite strict deadlines to ensure a swift procedure. On the one hand that is good, because parties will have certainty in a reasonable timeframe. On the other hand, it may put a lot of pressure on the parties, particularly on defendants who did not expect to be faced with the assertion of a patent before the UPC. They will have little time to prepare their defense and possible counterclaim.

EPLIT is happy to see that depending on the commercial interest of the case, the court fees will be adjusted. The system should not be so expensive that SMEs are effectively barred from enforcing their patents or defending against patents of others before the UPC.’

EPLIT promotes ‘any measures for improving patent litigation’. Could you explain?

‘We wish to remain engaged with the UPC, also when the system becomes operational. Apart from that, we hope to promote a debate among practitioners, commenting on the development of case law and contributing to the training and education of practitioners.’

Will EPLIT have to bridge gaps between the different national practices in Europe?

‘EPLIT’s membership comes from all UPC member states. While members are competitors in one sense, they face the same challenges in becoming acquainted with a completely new court system. An exchange of information and experiences will help EPLIT members to be more effective as practitioners before the UPC and this, in turn, will help to jumpstart the system. An example of EPLIT’s efforts is the mock trial that will take place in Munich on 22 January 2016 under the UPC Rules of Procedure. In addition, EPLIT organizes an annual meeting, this year on 11 April 2016 in Amsterdam.’

It seems practitioners from ‘strong’ IP countries, such as Germany, the UK and the Netherlands, will be in a position to extend their practices, to the disadvantage of practitioners in ‘peripheral’ jurisdictions. Is this correct?

‘It is unpredictable how the market for patent litigation will change. There will be fewer cases where the same patent is litigated in parallel in different jurisdictions. After the transition period this will disappear altogether. Nonetheless, there may be an increase in the number of patents that are enforced because UPC litigation may be more attractive than national litigation in that it covers a much wider territory and market for costs which are likely to be lower than litigation as it is currently run in some member states, e.g. the UK or Ireland.

Experienced practitioners may have an advantage in gaining a market share in the new system. However, I know several very good EPAs and lawyers from countries which are not the more traditional jurisdictions for patent litigation in Europe and I am confident that those will also do well in the new system.’

It has often been argued that the UPC system is important for and should be accessible for SMEs. In the meantime however, it seems that for instance the pharmaceutical and IT sector and big international businesses in general are the ones that will profit most. How do you see this?

‘I mostly agree with this view. An SME who is only commercially active in one member state may be sued before a local division of the UPC where he will be confronted with litigation that may be more expensive than national litigation in his country. Moreover, if he wishes to start a revocation action, he will have to do so before the central division, i.e. in a language that may not be his own in a court outside of his home country.’

What does the UPC mean for you personally: a burden or an interesting challenge?

‘For me it means learning a completely new legal system, which I would very much like to be active in. It opens the door to new possibilities in the form of direct representation before the UPC by EPAs, although it is my expectation that patent litigation will remain teamwork where lawyers and patent attorneys work together. The international dimension, where any lawyer or patent attorney can act before a division of the UPC anywhere in the member states, makes it all the more exciting.’

Written by: Kluwer UPC News blogger
Source: ‘Swift procedure Unified Patent Court may put a lot of pressure on defendants’

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Wouter Pors about the new rules of Litigation Certificate

We have interviewed Wouter Pors, Partner of Bird & Bird, before the upcoming event Unitary Patent Package. Wouter tells us everything about the new draft Rules for the European Patent Litigation Certificate. What are the concrete changes? And what does this mean for Lawyers and European Patent Attorneys?

New rules of Litigation Certificate: What are the concrete changes?

Wouter-Pors2Knowledge of tort law has been added, as well as knowledge of patent enforcement, as for instance provided by the Enforcement Directive. The addition of tort law is interesting, as the UPC Agreement does not give the UPC jurisdiction for claims based on tort. However, a defence in a patent case may of course be based on the concept of tort.

E-learning tools are now more clearly encouraged, but there should also be practical training requiring personal participation. I think it is assumed that lawyers will always have had such practical training in the initial years of their career, but many patent attorneys may have little experience in litigation.

In future, the certificate can only be obtained through an education at an institute which is accredited with the UPC. For a transitional period of just 1 year from entry into force of the UPC Agreement, it can also be obtained on the basis of having completed one of the “grandfathering” courses mentioned in the Rules. This used to be 3 years. This should not be too much of a problem, provided that a sufficient number of educational programs is accredited by 2017, the proposed start of the court.

The criteria for experience as qualification during the transitional period have been raised. This used to be having represented a party in 2 infringement cases in 4 years and now is having represented a party in 3 infringement cases in 5 years without the participation of a lawyer, or having acted as a judge in 3 cases. I would be surprised if more than very few patent attorneys would meet this requirement.

The rules on accreditation of educational institutions have now become more detailed, as have some other rules. Those are not material changes and do not affect the position of patent attorneys.

Basically, the changes are gradual, not fundamental.

What does this mean for Lawyers and European Patent Attorneys in your opinion?

There are no barriers for any lawyer to act as a UPC representative, whereas the requirements for patent attorneys have been raised slightly. It now seems highly unlikely that a patent attorney would qualify as a representative purely on the basis of experience. Basically only education will provide patent attorneys with the right to represent parties before the UPC without the involvement of a lawyer.

Are the qualifications of lawyers strict enough? Are the minimum requirements enough?

Neither. I understand that it is politically difficult to impose requirements on lawyers and to impose more requirements on patent attorneys, but the logic behind that is lacking. Patent litigation can be legally very complicated, involving many aspects of private international law, competition law and other difficult issues. The CJEU case of Huawei vs ZTE involved complicated questions of competition law and abuse of right. The CJEU judgement in the Spanish appeal against the Unitary Patent Regulation has raised the issue whether Article 7 UPR only determines the law that governs ownership of a Unitary Patent or also the law applicable to licence agreements and whether that can be modified by a choice of law in a licence agreement. Even the experts do not agree on that, but any UPC representative should be able to plead such an issue. So, in my view the bar should be raised further.

That of course certainly applies to lawyers. Patent litigation can only be done properly by true specialists with thorough knowledge of many aspects of the law, but any lawyer can now act as a representative before the UPC. The same of course already happens in the national courts, where you can regularly see a case fail because of bad representation. The Dutch Bar Association has recently given lawyers the option to indicate their specialisation in its online database, but there is no check on actual quality, unless there is an accredited specialisation association.

This has led Willem Hoyng, Dirk Visser and myself to take the initiative to set up such an association for The Netherlands, together with Carreen Shannon and Thera Adam. This association, the Vereniging Intellectuele Eigendom Proces Advocaten (Association Intellectual Property Litigation Lawyers, VIEPA), will have exams for lawyers who want to register as an IP litigation specialist, as well as strict requirements for maintaining their experience. There will be a sub-category for patent litigators, who are required to be an EPLAW member as well (which in turn requires experience in handling patent litigation). This is intended to guarantee a minimum level of quality in handling IP litigation, which can be checked at a glance in the Bar Association database. Lawyers have proven to be able to actively and efficiently self-regulate; the disciplinary systems for lawyers in most countries are based on this. I think our example of introducing a special IP qualification could be followed by lawyers in other countries.

How can an in-house patent attorney select the proper representative? Under what conditions can / should an in-house patent attorney hire a lawyer and when a European Patent attorney?

The answer varies depending on the size and experience of the company. Some companies have a lot of experience in patent litigation, because it is vital for the value of the company or because they operate in a highly litigious sector. These companies have highly specialized in-house lawyers doing strategic coordination of patent litigation. Richard Vary at Nokia has as much knowledge as any patent litigator. In-house patent attorneys may also be very experienced in handling the company’s legal IP strategy. Frank Landolt at Ablynx is very sophisticated. Those companies have no difficulty in selecting their litigators; they can assess the quality of their representatives without any problem. I also know a cloud technology start-up company where the management, which does not include a lawyer, is perfectly capable to do a very strict assessment of their legal representatives.

However, for less experienced companies and sme’s in general it is quite difficult to make a proper selection. Such companies need to be able to rely at least partly on a guaranteed badge of quality. For patent attorneys, this starts with the qualification as European Patent Attorney and the Litigation Certificate. For lawyers, it should start with a specialisation association that applies strict requirements. Next you can of course look at internationally recognised rankings, such as Chambers and Legal 500. In some countries you can also check the litigation track record online, like in The Netherlands or the UK, where all judgements in patent cases are published. That will also be the case at the UPC. Finally, you can ask a selection of firms to pitch for the work.

However, I hope not to be sounding too presumptuous, but it is hard for me to imagine a case that can be safely handled by a patent attorney without an experienced lawyer, just like it is hard to imagine a patent case to be handled by a lawyer without deep understanding of the technology at hand. Even if you are planning “just” to start a revocation action at the UPC (which in the German Bundespatentgericht and in EPO oppositions is done by patent attorneys), you cannot control the arguments and counterclaims the defendant may come up with. Therefore, I expect that the future will teach that lawyers will always be needed in UPC litigation, but they should be good lawyers and know their limitations in handling technology.

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Francesco Macchetta about Italy becoming the 26th UPP Member State

Prior to the Unitary Patent Package Conference we have interviewed Francesco Macchetta, Director Intellectual Property, Bracco Group . What is Francesco’s opinion about Italy recently becoming the 26th UPP Member State? And what are the consequences for the Italian companies?

Francesco Machetta2What is your opinion of Italy recently becoming the 26th UPP Member State?

I am very happy. I think it is a very significant contribution to the building of the new European system allowing Italy to fully take part in its effective shaping and take off phase. I would like to note the very short time between when our Government announced for the first time its intentions at the Competitiveness Council of end of May and its filing of the relative declaration (at the beginning of July). I hope, and I am confident, that we will witness a similar steady pace shortly with the Parlamentary approval of the law enabling the ratification of UPC.

What do you think of UPP & UPC entering into force next year?

Well. I look forward to it and hope that we can all witness it happening in 2016. I believe the new system represents an epochal change in the way patents are dealt with in Europe. Having just one forum to litigate patents in Europe can only be beneficial to technology innovation and its being implemented in wider markets, hopefully to the benefit of the buyer/users of the new technologies.

If we keep up with the promises of high quality judgment in a reasonable short time and overall cost effective, I am confident we’ll see UPC becoming a meaningful patent litigation forum worldwide.

What would be your frank and concise answer to the fatidic question: cui prodest?

I believe any business and institution dealing with technology innovation and implementing an adequate patent protection strategy for it will benefit from the new system. European enterprises can get the most of it if they accept the challenges of technology innovation and with no exception consider the EU market, instead of any national portion of it, as their “home” market.

What are the consequences for the Italian companies, from start-ups to multinationals?

I believe that with Italy being part of the new system in full from the beginning, it has a significant impact on its success and rapid pick up phase. Currently an EP patent once granted is validated in Italy in about 50% of the cases. It is in the fourth place among EPC contracting States. So there will be advantages for all patent-oriented innovative companies, independently of their seat or principal place of business. For the Italian ones, there is the immediate “relief” of not having to follow two parallel routes, one for Italy and another one for the rest of EU, but I expect the main advantage to be a revamped awareness of the strategic value of IPRs (and patents in this case) and a better and more effective use of it.

What are the consequences on UPP renewal fees?

Hopefully none! As we know there is an agreement in principle already in place (the so-called “true top 4” scenario)  and I do not expect it to be re-discussed or revisited now. The agreement in principle tried to strike a balance between guaranteeing the long term sustainability of EPO functioning and attractiveness to applicants. I think the balance has been reached with the “true top 4” scenario and there is no need to revisit it now. The addition of Italy, as I said, should enhance acceptance of the new system in particular at the beginning, thus broadening the number of those choosing UPPat its start. The result of it is that more money that initially expected should be collected at the beginning.  This double effect, i.e. more attractiveness to potential users and consequent higher income from renewal fees, as one can see, still balances attractiveness for patent applicants with long term sustainability of the EPO, in my view.

What is the opinion in Italy on the projected UPP renewal fees ?

It is hard to generalize, but in innovation (and patent)-oriented industry I believe that there is agreement  on the fact that, now that Italy is in the system  and we do not have to pay an extra fee to protect ourselves here, on  “true top4” is overall acceptable. Many believe however that “true top4” is already at the extreme of the generally acceptable end of the spectrum.