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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

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Wouter Pors: The Unified Patent Court – back on track again

Wouter-PorsRead the opinion of Wouter Pors, partner of Bird & Bird and one of the key note speakers at the Unitary Patent Package Conference 2017 in Amsterdam about the ratify of the UK.

 

Brexit a shock to the Unitary Patent Package

In spring 2016 the Unified Patent Court (UPC) was well on its way to open up in late spring 2017. Court buildings were already rented in a number of cities, including the facilities for the Court of Appeal in Luxemburg. The Protocol, signed on October 1st, 2015, allowed for a provisional application period which would enable the Administrative Committee to start its work, including the appointment and training of the UPC judges. The case management system was still under development, but well on its way and the Rules of Procedure were almost finished.

And then there was the Brexit referendum in the United Kingdom, creating a period of uncertainty and even chaos. However, those who had been working on the creation of the UPC and the Unitary Patent immediately started working on finding solutions, either by keeping the UK on board or, if need to be, continuing without the UK. In the months that followed many published their views online and the safe approach according to many seemed to be that the system would be slowed down considerably, severely handicapped or even dead. I never shared that approach and preferred focusing on assisting in finding a solution. Fortunatey, there were also some very interesting publications and presentations, especially from Prof. Tilmann and prof. Ohly, and later on the Gordon-Pascoe opinion, that focused on a solid legal basis for a long-term solution. There were many discussions at seminars and conferences and of course there was a lot of silent diplomacy.

The wonderful news of 28 November

On Monday 28 November the decision of the United Kingdom was made public during the meeting of the Competitiveness Council of the European Union. It officially reads:

“The UK government has confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement. (…) 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. The UPC itself is not an EU institution, it is an international patent court. The judiciary appointed include UK judges.”[1]

There is a series of messages in this short text. The UK is not limiting itself in any way in taking positons during the upcoming Brexit negotiations; it remains completely free to cut free from the ties of the EU. Ratification cannot be seen as joining a new EU institution, since the Unified Patent Court is not an EU institution, it is an independent court, based on an international treaty. Judges from the UK will be appointed on this court, so they will play an important role in building its case law. The UK will continue its preparations to ratify, but the objective is to bring the court into operation as soon as possible, which means the UK will deposit its instrument of ratification soon.

Of course, there are good reasons to go ahead with this project. Focusing on the interests of the UK, its government said:

“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. 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.”

At the press conference of the Competitiveness Council Commissioner Bieńkowska said that this is very good news for the industry and that we have been waiting for this for almost 40 years – not for the UK, but for a Unitary Patent and a court at European level.

In preparation of the Council meeting a letter was sent by Belgium, The Netherlands, Luxemburg and Sweden to urge for a fast solution. This was supported by a number of other Member States, including Germany. Thus, there seems to be consensus that a Unified Patent Court and a Unitary Patent in which as many European countries as possible participate is good for European industry and for the protection of innovation in Europe. Many NGO’s had expressed the same view ever since the Brexit referendum. Obviously, the members of the Competitiveness Council who have contributed to give the UK sufficient comfort to be able to take this position have not focused only on the short term until the actual departure of the UK from the EU, but have taken the long-term situation into account. Naturally, there is no public statement on this, but it can be assumed to be part of the silent diplomacy that produced this result. Therefore, it seems likely that these EU Member States will not oppose the international law approach that will be described below.

A solution for now, but what about the long term?

The short-term legal situation seems to be easy. The UK is still a member of the European Union and will continue to be so for the next years. The notification under Article 50 of the Treaty on European Union (TEU) will probably not be sent to the European Council before next spring and then it will start a two years period of negotiations on a withdrawal agreement. In the meantime, on 3 November 2016, the High Court of Justice issued its judgment on the question whether the Article 50 notification should be an Act of Parliament, finding in favour of the plaintiffs.[2] Accordingly, the Secretary of State does not have power to give such notification. A direct appeal to the Supreme Court will be heard early December and a judgment is expected shortly afterwards.

Until now 11 Contracting Member States have ratified the UPCA. In addition, Italy, Lithuania and Slovenia have finalized their ratification procedure and are ready to deposit. Germany should be ready within a couple of months. Add the UK ratification to this, and UPCA will enter into force and so will the Unitary Patent Regulation (UPR). Prior to that the Protocol will enter into force, allowing for the provisional application period. The idea has always been that this should last for about 6 months, inter alia allowing for the appointment of UPC judges and the subsequent educational program, which is ready to be deployed. It includes elearning tools, seminars and mock trials. At the EPLAW Congress on Friday 25 November it was announced that there will even be a hard copy book version of the elearning tools. The UPC could then open up for business in the second half of 2017, while at the same time the possibility to apply for unitary effect of a European patent (for patents granted as of then) would come to life. Commissioner Bieńkowska even said optimistically that Unitary Patents would become available early 2017, but the start will more realistically be towards the end of 2017.

Obviously, at that point in time, the UK will still be a member of the EU, so everything will go ahead as planned at least until the actual Brexit date (if and when that happens). Of course, as the UK government pointed out, the UPC is not an EU institution. The UPR however is, as on the one hand it is based on Article 118 of the Treaty on the Functioning of the European Union (TFEU), although on the other hand it is based on Article 142 of the European Patent Convention (EPC).

For traditional European patents, claimants will have the choice to go either to the UPC or to the national courts for at least 7, but more likely 14 years. During that transitional period British companies can even opt out their traditional European patents from the jurisdiction of the UPC, with effect for the lifetime of that patent, so the actual effect on the sovereignty of the British courts is limited, although that does not apply to defendants who are sued in the UPC. But this was all part of the deal and the UK played an important role in the creation of the new system.

The big issue of course is what will happen when the Brexit becomes a fact and the UK actually leaves the EU. Some interesting thoughts on this have been developed over the last months. Let’s first take a look at the UPC before turning to the Unitary Patent.

The UK’s participation in the Unified Patent Court Agreement after Brexit

The first question is whether the UK would be forced to leave the UPCA when it leaves the EU. According to Prof. Tilman and prof. Ohly this is governed by the Vienna Convention on the Law of Treaties (VCLT).[3] That  was also discussed at the EPLAW Congress on 25 November 2016.

The UPC Agreement contains no provisions on termination of the Agreement or termination of the membership of a Contracting Member State, like the TEU does. Of course, it can be argued that Article 2 under (b) requires that a Member States as meant in the UPCA is a Member State of the European Union, meaning that Contracting Member States should be a Member State of the EU, but that in itself is not convincing if the UPCA doesn’t attach any consequences to this definition. However, there are some provisions in the UPCA that do seem to refer to this status of the Contracting Member States, especially:

Article 22(1):

The Contracting Member States are jointly and severally liable for damage resulting from an infringement of Union law by the Court of Appeal, in accordance with Union law concerning non-contractual liability of Member States for damage caused by their national courts breaching Union law.

Article 23:

Actions of the Court are directly attributable to each Contracting Member State individually, including for the purposes of Articles 258, 259 and 260 TFEU, and to all Contracting Member States collectively.

Article 84(1):

This Agreement shall be open for signature by any Member State on 19 February 2013.

Article 84(4):

This Agreement shall be open to accession by any Member State.

Article 84 only requires that a Contracting Member State that joined the agreement on its initial signing date, 19 February 2013, should be an EU Member State at that point, which the UK was and still is. In addition, Article 84(4) provides that afterwards only EU Member States can join the UPCA. This makes it all the more remarkable that there are no provisions on termination, which apparently was not something that the Contracting Member States would ever want to happen.

The VCLT provides further clarity on the issue. Two EU Member States are not a party to the VCLT: France and Romania. However, the VCLT is assumed to form the codification of unwritten principles of international law, to which France and Romania are not expected to oppose. It can be assumed that at least France was fully aware of this in the weeks leading up to the 28 November meeting and apparently the UK felt that there was enough comfort given to go ahead with the ratification. It must be assumed that all key players have seen the comments on the effect of the Vienna Convention on the current situation.

Article 56(1) VCLT provides:

“A treaty which contains no provision regarding its termination and which does not provide for denunciation or withdrawal is not subject to denunciation or withdrawal unless:

(a) It is established that the parties intended to admit the possibility of denunciation or withdrawal; or

(b) A right of denunciation or withdrawal may be implied by the nature of the treaty.”

Neither is the case for the UPCA. There is no sign of such an intention of the parties. To the contrary, the clear intention was to achieve a permanent solution for the shortcomings of the European patent system. Obviously, the nature of the treaty is an instrument to establish a permanent international court, well beyond a transitional period that has been envisaged to last 14 years. There is no implication that a possibility of  withdrawal within just 2 or 3 years after the establishment of the court was intended.

Article 60 VCLT provides that the parties to an agreement can suspend or terminate the operation of the treaty in case of a material breach by another party. Such material breach occurs if:

(a) A repudiation of the treaty not sanctioned by the present Convention; or

(b) The violation of a provision essential to the accomplishment of the object or purpose of the treaty.

Is it essential for the accomplishment of the object or purpose of the UPCA that the UK remains a Member State of the EU? These purposes are listed in the recitals of the UPCA, which inter alia provide:

CONSIDERING that the fragmented market for patents and the significant variations between national court systems are detrimental for innovation, in particular for small and medium-sized enterprises which have difficulties to enforce their patents and to defend themselves against unfounded claims and claims relating to patents which should be revoked;

WISHING to improve the enforcement of patents and the defence against unfounded claims and patents which should be revoked and to enhance legal certainty by setting up a Unified Patent Court for litigation relating to the infringement and validity of patents;

CONSIDERING that the Unified Patent Court should be devised to ensure expeditious and high quality decisions, striking a fair balance between the interests of right holders and other parties and taking into account the need for proportionality and flexibility;

CONSIDERING that the Unified Patent Court should be a court common to the Contracting Member States and thus part of their judicial system, with exclusive competence in respect of European patents with unitary effect and European patents granted under the provisions of the EPC.

Remarkably, the EU is not even mentioned in these purposes, only the EPC is. Of course, the recitals also contain considerations with regard to the primacy of EU law, which I will deal with further below, where I will show that these can be met anyway. Thus, the UK leaving the EU cannot be considered to be a material breach of the UPCA as defined in Article 60 VCLT in the light of the purposes of the UPCA, as it does not block achieving these purposes if the UK remains a party to the UPCA, quite to the contrary.

A further question that relates both to Article 60 VCLT as well as to Article 4(3) TEU (the principle of sincere cooperation), Article 20 TEU, Article 2 TFEU and Article 118 TFEU is whether the UPC will still meet the conditions of Articles 20 – 23 and 24(1)(a) UPCA, which provide for the primacy of EU law, as further explained in the recitals of the UPCA. This raises the question whether a UPC in which the UK continues to participate after having left the EU still meets the conditions as set out in opinion 01/09 of the Court of Justice of the European Union (CJEU).[4] This opinion has often been represented as requiring that only EU Member States participate in the UPC, but Gordon and Pascoe,[5] as well as Tilmann and Ohly have shown clearly that this is not the case. Basically, the opinion boils down to three conditions: (1) the primacy – or full effectiveness, as the CJEU calls it – of EU law should be respected, (2) there should be an obligation to refer questions on the correct interpretation of EU law to the CJEU and (3) the EU Member States should be liable for any violation of EU law. All of this is guaranteed in the UPCA, to which the UPC itself of course remains bound.

The obligation of Article 267 TFEU to refer questions to the CJEU is upon the courts of the EU Member States. Article 21 UPCA has imposed the same obligation on the UPC as a court common the the Member States, “as any national court”. The fact that one Contracting Member State no longer is an EU Member State will not change this. The UPC will indeed give full effect to EU law according to Article 20 and 24(1)(a) UPCA. If the UK remains a Contracting Member State, it thereby accepts that this is also the case if a judgment is rendered that has effect on the UK territory or on UK based parties to the litigation, just like it will have excepted this when it ratifies the UPCA prior to leaving the UK. Actually, it is expected that the UK will want to have an agreement on jurisdiction, recognition and enforcement of judgments with the EU, comparable to the Lugano Convention, which will provide the same effect on UK territory and UK based companies for judgments from national courts based in the EU Member States; those judgments will then be enforceable within the UK. When the UPC refers a question to the CJEU after the UK has left the EU, it will in fact do so on behalf of up to 23 EU Member States for which it has jurisdiction, so there is not really a reason why this would be a problem under EU law. I don’t see how the CJEU could refuse such references.

Similarly, those 23 EU Member States will be jointly liable for violations of EU law under Article 22 UPCA. This liability will be decided “in accordance with Union law concerning non-contractual liability of Member States for damage caused by their national courts breaching Union law”, meaning that the UK basically submits to the application of this rule of international law. The liability itself rests on the Contracting Member States, which is not strictly limited to EU Member States. Apparently there is an intentional, or at least useful difference between the use of the terms “Member States” and “Contracting Member States” within this same provision.  Article 23 states that liability is provided “including for the purposes of Articles 258, 259 and 260 TFEU”, but it is not limited to those purposes and may therefore also extend to a Contracting Member State that is not bound by the TFEU. In fact, Article 22 and 23 UPCA mean that next to EU Member States, even a non-EU Member State will be liable for violations of EU law.

However, although the provisions on liability may be necessary for compliance with EU law, their practical effect should not be exaggerated. After all, such liability can only arise if the UPC, which is a highly specialized international court that is thoroughly aware of the impact of EU law on patent law, would disregard EU law, not seek the interpretation by the CJEU and create damage to a party to the litigation. This is highly unlikely to happen and if it does, the Contracting Member States will no doubt be willing to compensate for such damages.

Tilmann has pointed out that during the transitional period the UK national courts can also decide patent cases and in doing so are not bound by EU law after the UK has left the EU. However, it should be borne in mind that this cannot relate to Unitary Patents, as these are within the exclusive jurisdiction of the UPC. With regard to traditional European patents it is a very common situation that EU law is not applied; that goes for the courts of 10 of the 38 EPC Member States. Now, a patent case may be litigated in the UK courts during the transitional period after the UK has left the EU because it has no impact whatsoever outside the UK. In that case it’s not a real problem that no question is referred to the CJEU. On the other hand, if this is a case with an impact across at least a part of Europe, in practice there will be parallel litigation either in a national court of an EU Member State or in the UPC and in that case relevant questions will be referred to the CJEU. It is then for the UK courts to decide to follow that or not, but if they don’t that is in no way a violation of EU law.

As I understand, following opinion 01/09 the EU Member States in negotiating the UPCA took the safest way by deciding that only EU Member States could join instead of strictly following the rules set by the CJEU. At that time, no Brexit could be expected, but I have heard comments saying that looking back, it would have been better not to go any further than was actually required by opinion 01/09.  That would have prevented speculation that a Contracting Member State could not remain party to the UPCA when it leaves the EU.

In conclusion, in my view no changes to the UPCA are required when the UK ratifies it and also no changes are required when the UK later on leaves the EU. If any changes would need to be made, they would be of a rather technical nature and this would certainly fall within the competence of the Administrative Committee under Article 87(2) UPCA to bring the UPCA in line with EU law.

I also see no reason why the EU itself should join the UPCA, as some have said, including Gordon and Pascoe. Tilmann has said in a position paper – for which I unfortunately have no public source of  publication – that this is based on the misconception that the London Local Division and the London seat of the Central Division would somehow be UK courts, which they are clearly not; they are still part of the UPC, an international court that respects the primacy of EU law. Indeed I fully agree that there is no requirement for the EU to become a party to the UPCA and actually that would be contrary to the intention of the Contracting Member States, as is apparent from the history of the UPCA.

The UK’s participation in the Unitary Patent after Brexit

And what about the Unitary Patent? Will it be able to cover the UK after Brexit? The UPR is a Regulation on enhanced cooperation between EU Member States, based on Article 20 TEU, Article 118 TFEU and Article 142 EPC. It is clear that currently participation in such enhanced cooperation is limited to EU Member States, meaning that in theory a Unitary Patent would no longer cover the territory of the UK when the UK leaves the EU.

If nothing is done about this, the practical effect would be the following. Upon Brexit, the unitary effect would cease for the UK. It is then for UK national law to provide for a conversion into a national UK part of a traditional European patent. Normally, national validation has to be done within a short time from grant of the European patent, but this can create a problem in any case where unitary effect is refused by the European Patent Office, which may later on be confirmed by the UPC. Contracting Member States are therefore considering to include conversion provisions in their UPC implementation laws to cover this situation and the UK could do the same for the effect of Brexit. The result would be that a Unitary Patent would remain in force for 24 Contracting Member States and be converted into a UK national bundle patent for the UK. However, both could still be litigated in the UPC, as discussed above. Of course, there would be an extra maintenance fee for the UK and the Unitary Patent would cover less consumers for the same price, which is also bad.

Thus, a solution needs to be created to enable the Unitary Patent to cover the UK after Brexit. In fact, there is a legal obligation to do this. Article 21(1) TEU provides:

“The Union’s action on the international scene shall be guided by the principles which have inspired its own creation, development and enlargement, and which it seeks to advance in the wider world: democracy, the rule of law, the universality and indivisibility of human rights and fundamental freedoms, respect for human dignity, the principles of equality and solidarity, and respect for the principles of the United Nations Charter and international law.”

A Unitary Patent is a property right. The EU is a Member State of the TRIPs Agreement and therefore has to provide for patent protection for inventions. But the real issue is Article 17 of the EU’s own Charter of Fundamental Rights of the European Union,[6] “solemnly proclaimed” by The European Parliament, the Council and the Commission, which reads:

“Right to property

  1. Everyone has the right to own, use, dispose of and bequeath his or her lawfully acquired possessions. No one may be deprived of his or her possessions, except in the public interest and in the cases and under the conditions provided for by law, subject to fair compensation being paid in good time for their loss. The use of property may be regulated by law in so far as is necessary for the general interest.
  2. Intellectual property shall be protected.”

Article 51 provides that the provisions of the Charter are inter alia addressed to the institutions and bodies of the EU. Therefore, proprietors of Unitary Patents can claim that the EU needs to protect the scope of their property by providing for a solution for the Brexit issue.

Fortunately, this can indeed be done. Article 142 EPC allows for unitary protection for any EPC Member State, regardless of whether they are an EU Member State. Tilmann has proposed that an extension of unitary effect to the UK could be achieved by way of a protocol to the UPCA on the basis of Article 142 EPC. In that case, the EU should not object to this as Tilmann says, but I would like to add that the EU should certainly  not object in view of the Charter.

But the better solution would probably be to include this in the UK exit agreement under Article 50 TEU. That would certainly be sufficient and indeed such a solution is not needed before Brexit becomes effective, so this would allow for a seamless transition. Since the UPC would retain exclusive jurisdiction for such Unitary Patents, all conditions of opinion 01/09 would be guaranteed. If this solution would then be tested before the CJEU, that EU institution would of course also be bound by the Charter, so this is a safe way to solve the problem of the Unitary Patent.

Any other issues?

In view of the above it is clear that the UPC and the Unitary Patent can start as soon as the UK has ratified the UPC Agreement. In case of the actual Brexit, probably no changes to the UPCA are required and if any are, this can be accomplished by the Administrative Committee under Article 87 UPCA. Maintaining protection for the UK under the Unitary Patent after Brexit becomes effective does require some additional measures, but due to the Charter of Fundamental Rights of the European Union, the EU institutions are obliged to provide for this. However, that pressure will probably not be necessary, since including the UK in the Unitary Patent is also in the interest of the EU, the EU Member States and the European industry.

That leaves one outstanding issue: upon Brexit the Brussels I Regulation will cease to have effect for the UK, including the new Article 71a, which determines that a court common to several Member States is also deemed to be a court of each of those Member States. This will need to be solved in an Agreement between the EU and the UK similar to the Lugano Convention. Of course, this may also be incorporated in the UK Exit Agreement; indeed it will only be needed when Brexit takes effect.

So, my overall conclusion is that the UPC and the Unitary Patent indeed are back on track and that providing a long-term solution isn’t even that complicated. I am certainly looking forward to representing my clients before a UPC panel in the near future and I do believe that the new system will help in giving Europe a new competitive edge over other regions in the world.

[1] https://www.gov.uk/government/news/uk-signals-green-light-to-unified-patent-court-agreement

[2] R (Miller) v Secretary of State for Exiting the EU [2016] EWHC 2768 (Admin)

[3] A possible way for a non-EU UK to participate in the Unitary Patent and Unified Patent Court? – IPKat, http://ipkitten.blogspot.nl/2016/06/a-possible-way-for-non-eu-uk-to.html; Prof.dr. Winfried Tilmann, The Future of the UPC After Brexit, http://www.theunitarypatent.com/the-unitary-patent-regulation-and-upc-agreement-after-brexit; Prof Dr Ansgar Ohly, UPC and the impact of Brexit – Way forward?, Venice European Patent Judges’ Forum 2016, http://eplaw.org/wp-content/uploads/2016/11/UPC-Brexit-San-Servolo-EPLAW.pdf.

[4] Opinion 1/09 of the Court (Full Court) of 8 March 2011

[5] Richard Gordon QC and Tom Pascoe of Brick Court Chambers, Opinion re the Effect of ‘Brexit’ on the Unitary Patent Regulation and the Unified Patent Court Agreement of 12-9-2016, http://www.cipa.org.uk/policy-and-news/latest-news/legal-opinion-on-the-uks-participation-in-the-upc-after-brexit/

[6] 2000/C 364/01

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Wouter Pors is one of the speakers at the Unitary Patent Package Conference, 9 and 10 February 2017 in Amsterdam. Wouter will inform you of the strategies for proceeding at the UPC.

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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.

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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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Unitary Patent system is better off with UK, but worthwhile even without the UK

The best way forward for the Unitary Patent system after the Brexit vote of 23 June 2016 is to find a way to keep the UK inside the system. That is the opinion of Francesco Macchetta, director IP of the Bracco Group, a healthcare multinational with headquarters in Milan, and speaker at the Unitary Patent Package Conference. But if the UK don’t stay in, Macchetta thinks Milan would be a logical new location for the London branch of the Central Division of the Unified Patent Court (UPC), he said in an interview with Kluwer IP Law.

How important is the Unitary Patent system for Bracco?

‘I believe that the new patent system for Europe, both the UPC and the Unitary Patent protection for European patents, will benefit all technologically innovative companies. As Bracco Imaging derives a very large proportion of its income worldwide from products which are fruit of its own R&D, I believe it is in a position to benefit most from the new system.’

How has your company been preparing for it?

‘As many others in business, we’ve been following the evolution of the system toward its final implementation and studying the already available implementing regulations.’

Francesco Macchetta
Francesco Macchetta

What is the best way forward now that, due to the Brexit vote, UK participation in the UP system and the future of the system itself have become uncertain?

‘The best way forward, in my view, is to keep the UK in the Unitary Patent system. Relatively easy ways to achieve this goal have been authoritatively devised. Of course some political hurdles need to be settled in advance, which I hope happens very soon.’

Is the system worthwhile without the UK?

‘Yes, the territory that will be subject to the jurisdiction of UPC will still be relevant in Europe and worth being protected unitarily, in my view.’

Do you see the recent UK High Court ruling, that the government has to have support from parliament to start the article 50 procedure, as a new setback for the future of the UP system?

‘While not having any knowledge or expertise in this matter, I do not believe that it represents necessarily a “setback”. The decision on ratifying the UPCA or not still lies with the UK authorities and I really hope that they will decide to ratify it very soon!’

L’Ordine dei Consulenti in Proprietà Industriale in Italy has asked the government to secure the London part of the Central Division for Milan if the UK leaves the UP system. And in an article published by the Società Italiana Brevetti, it was suggested Italy should not ratify the UPCA in order to reinforce its negotiating position to achieve this. What is your view on this?

‘I would keep the two issues separated. In case the UK does not ratify the UPCA, Italy is the next country satisfying the conditions under Art 89 UPCA and thus it is both legitimate and straightforward that Milan takes over the role of London as the location of a branch of the Central Division.

I am very happy that Italy completed the enactment of the law enabling ratification of the UPCA last month and I expect that the ratification process will be completed without delay. Negotiation power for Italy lies in having ratified the UPCA.  Not completing the ratification process does not give any advantages, it would rather create drawbacks.

If the UK ratifies the UPCA, it will enter into force without Italy (upon the expected ratification also by Germany of course), with negative effects for the Italian industry, in my view. If the UK does nót ratify, some negotiations and changes will be necessary – one of them relating to the location of one of the branches of the UPC Central Division. Having ratified the current version of the UPCA will not jeopardise at all Italy’s chances in such negotiations. In my view, indeed, the negotiation power of Italy is reinforced by having completed the ratification process.’

In Italy, the UP system was opposed until 2015 and for quite some time it looked like the country would only join the Unified Patent Court and not the Unitary Patent. How is the general feeling toward the system among big and smaller companies in Italy? What made Italy change its position?

‘Roughly said, I believe that those who opposed the system still do, and those who were in favour still are.  Among the latter group there are industry and industry associations, including both bigger and smaller companies, such as notably Confindustria. I believe that the efforts of industry in primis but also the attention in the government and in Parliament for this topic in the end made this possible in a rather short time.’

Recently, the two chambers of the Italian Parliament ratified the UPC Agreement. When do you expect Italy to formally deposit its instrument of ratification with the EU Council?

‘That should happen any time soon.’

Written by Kluwer UPC News blogger
Source: Unitary Patent system is better off with UK, but worthwhile even without the UK

Unitary Patent Package

Francesco Macchetta is one of the speakers at the Unitary Patent Package Conference, 9 and 10 February 2017 in Amsterdam. Check out the program of this conference.

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

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

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

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

Is the lack of signatories a problem?

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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Report of Unitary Patent Package Conference 2016 in Amsterdam

Written by: Kian Hsia, Bird & Bird

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

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

Day 1

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

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

View on UPC

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

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

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

Rules of Procedure for the UPC

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

Implementation of the Unitary Patent

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

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

Day 2

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

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

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

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

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

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

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

Opt-out

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

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

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

Renewal fees

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

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

Countries in the Unitary Patent system

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

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

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

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

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

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

 

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

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

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

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

The UPC Agreement

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

Procedure for opting out patents

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

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

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

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

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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.