Bifurcation & the UPC: Much ado about something?

Merpel keeping warm in the cold, London
nights with her Easter present. 

At the kick off meeting of Europe's new Unified Patent Court's Preparatory Committee before Easter, representatives from the Participating Member States huddled around a table in Brussels and, for all intensive purposes, seem to have drawn straws as to which of the five working committees they would be in charge of in setting up the new Unified Patent Court.  With the duly elected Chair of the Preparatory Committee - Paul van Beukering - and Vice-Chair - Alexander Ramsay at the helm, the Committee's committees were broken down as follows:

1. Legal Framework
2. Finance
3. IT
4. Facilities
5. Human Resources and Training

According to some sources, the German Ministry of Justice took responsibility of the legal frame work with the UK IPO steering the much less exotic (and much more frustrating) world of IT.

In a letter to representatives of key stakeholder groups, the Chair and Vice Chair of the Committee stated:

"The Preparatory Committee considers it to be of vital interest that stakeholders will be actively  involved in the work of the Committee. Input from industry, patent judges and practitioners will be needed throughout the process, both at the expert level of the project teams and at a more general level. This will be realised through formal as well as informal consultations and dialogue sessions. An important instrument for communication will be the Committee’s website which will be developed shortly.

Priority shall be given to a broad consultation on the Rules of Procedure amongst interested circles. The Committee will do so in close cooperation with the expert group that has worked intensively on a draft set of rules. Details about the consultation will be communicated in due time. Let us assure you, input from stakeholders is of utmost importance to the Committee especially on this essential element of the Committee’s work and a sufficient amount of time will be given."

With a final meeting of the Rules of Procedure Committee due in the next couple of weeks, now is the time for stakeholders to start gearing up to let the Preparatory Committee know their concerns as to how the litigation and rules will operate in practice. 

From Merpel's experience, the rules that permit bifurcation and the granting of preliminary injunctions are provisions that strike the most fear into industry.  Because infringement claims are geared to be brought  in the local and regional divisions (subject to the location of the defendant and its activities) the local/regional courts will be automatically faced with a question of when and how to bifurcate if the defendant counterclaims for revocation (assuming the parties do not agree that the entire case be transferred to the Central Division).

Under the current draft of the Rules and the Unified Patent Court Agreement, the local/regional division then has the discretion as to whether to continue with both claims or stay the infringement claim (pending the bifurcation claim in the Central division) or bifurcate the revocation claim to the Central Division with both cases travelling in parallel in different courts.   There is no automatic stay of the infringement claim where validity is challenged. However, the current wording states that the court "shall stay" the infringement claim where "there is a high likelihood" that the relevant claims of the patent are invalid.  ["High threshold, is it not?", purrs Merpel.] 

With rumours that German judges- who will man at least 2/3rds of a local and regional panel of judges in Germany -will be happy to hear both infringement and validity together (and would have been happy to do so previously save for a German constitutional provision), Merpel considers that now is the time to shed some light on bifurcation in practice for those judges and litigants who may in the future be sitting/litigating in other local/regional divisions of the UPC. 

What are the lessons from bifurcation they (and, in turn, the Preparatory Committee who will be in charge of finalising the Rules of Procedure) should know about?    Do readers have any horror or romance stories of cases they were involved/acted in which were bifurcated and/or subject to a preliminary injunction?  If you are still recovering from the bruises in private, you can e-mail Merpel at merpel.mckitten@gmail.com.