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.
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.
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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