This member of the IPKat team attended the Consultation Event on the current draft of the Rules of Procedure of the Unified Patent Court that took place yesterday (3 September 2013) in London in the lovely offices of Bristows. Bristows kindly hosted the event, which was jointly organised by the Intellectual Property Office, the Chartered Institute of Patent Attorneys, and the IP Federation. You should be able to view the recording here, although it is not currently working for this moggy.
The event was expertly chaired by Dr Bobby Mukherjee, President of the IP Federation, and (in his spare time) Chief Counsel – IP & Technology Law at BAE Systems.
In attendance was Neil Feinson, Director of International Policy at the IPO, who is lucky enough to be a member of Preparatory Committee of the Unified Patent Court, whose job it is to make sure that the Unified Patent Court actually gets set up (there is a roadmap and everything here).
The event began with an overview of the unitary patent and unified patent court system by Kevin Mooney (Simmons & Simmons) who has been serving on the Drafting Committee of the Rules of Procedure of the Unified Patent Court. Then, that was a panel discussion that additionally included Lord Justice Floyd (also sitting on the UPC Rules of Procedure Committee), Alan Johnson (Bristows), and Richard Vary (Nokia).
Seven topics in particular were discussed.
I won't link at each occurrence - you can see the UPC Agreement here and the 15th draft of the Rules here. (If you want to refer, the Unitary Patent Regulation is here.)
1 Procedural Appeals.
The question was whether the Court of Appeal should have power to grant leave to appeal on procedural issues if leave is refused by the first instance court. Current Rule 220 is ambiguous because so is Art 73(2)(b)(ii) of the UPC Agreement – the drafters of the rules felt that therefore the rule could only mirror the Article. The wider issue of the advisability of allowing separate procedural appeals was discussed. The argument for separate procedural appeals is that it will enable the Court of Appeal to develop a uniform jurisprudence on procedural matters. In the absence of procedural appeals, different local practices can be expected to arise. On the other hand, there is the fear that allowing procedural appeals will increase the likelihood that the target timeframe of one year to a first instance decision will not be met.
Your IPKat team member wondered why the rules themselves did not contain a lot more clarity as to the criteria as to whether extensions of time should be granted. He was answered by Kevin Mooney pointing out that since the Preamble to the draft rules states that “proceedings shall be conducted in a way which will normally allow the final oral hearing on the issues of infringement and validity at first instance to take place within one year whilst recognising that complex actions may require more time and procedural steps and simple actions less time and less procedural steps”, it is to be expected that judicial discretion in determining the allowability of extensions of time would take this target into account.
2 Opt Out.
During the first (at least) 7 years of the UPC system owners of the European patents and applications can opt out of the jurisdiction of the UPC (see Art 83 of the UPC Agreement). Notwithstanding the views of some commentators, the drafters of the Rules of Procedure consider that this opt out is effective for the life of the patent. The current rules envisage a “sunrise period” before the UPC formally begins to allow proprietors to opt out in advance, to prevent opt-out being frustrated by a third party filing an action (eg a revocation action) at the UPC in the meantime (which according to Art 83(3) of the UPC Agreement would prevent opt-out). This sunrise provision is in draft Rule 5(9).
The first question is whether the sunrise period is legally valid. Some observers apparently consider that delegating the opt-out to the EPO before the registry of the UPC is set up is ultra vires. (Art 83(3) states that opt-out is to be filed at the Registry, but this won't have been set up in the sunrise period, by definition, so the rule contemplates delegating the function to the EPO during that period alone.) Your correspondent thinks there was unanimity that the sunrise period, or some equivalent provision to prevent the launching of actions before patentees have had the chance to opt out if they wish, is essential.
The possible opt out fee was debated. Unsurprisingly, all patentees who spoke said that the opt out fee should be low or zero. Many said that they felt aggrieved that they would have to pay to maintain a status quo that was the basis upon which they had filed a patent application in the first place. (Merpel points out however that initially the opt-out fee will be the only source of income for the UPC).
There is also envisaged a fee to opt back in. There was some sentiment that since this involved a change of mind, it may be justifiable for this fee to be higher.
This moggy questioned this sentence in paragraph 1 of Rule 5 “The Application shall be made in respect of each of the contracting member states in which the European patent is owned by the proprietor or proprietors in question.” He thinks that this is supposed to be declaratory – you can only opt out in toto – but it seems to suggest that a separate application per country is required. Kevin Mooney agreed that this provision was intended to have the former meaning, but needed attention.
The issue was whether a revocation action in the Central division should automatically be stayed in the event of an infringement action in a local or regional division (the current proposal of Rule 70 (3), absent agreement of the parties), or whether there should be some flexibility. The concern was expressed that this could be used as a way of delaying revocation by patentees launching infringement actions shortly before trial. This did not attract much debate.
There was plenty of healthy debate as to the pros and cons of optional and/or mandatory bifurcation (of validity from infringement action). This is in draft Rule 37.
This Kat observes that since the expectation is that different practice of different divisions is expected and even perhaps encouraged, it seems unlikely that clear consensus among users, or clear guidance in the Rules, will be achieved or even aimed for. (Further Katnote: it is interesting as well that one of the reasons for the lack of unanimity on procedural appeals [topic 1 above] is that those parties who favour bifurcation fear that such appeals will be used to limit the discretion of the local and Regional divisions to bifurcate).
5. Forum shopping.
While there is Rule 19.1 to deal with the situation where a cases is filed in the wrong division, there was no procedure to address a perceived abuse which is within the scope of the black-letter rules. Allowing one would perhaps encourage forum to be routinely challenged, to no great good. There was concern expressed about SMEs being dragged into litigation (for the whole of Europe) in a forum non conveniens and, for example, perhaps not in a language that they understand.
6. Preliminary Injunctions.
The criteria for preliminary injunctions are set out in Rule 211. This Kat is concerned that these are couched in entirely permissive (“The Court may…” and “the Court shall have discretion to”) rather than mandatory language. As he commented at the event (to no great agreement, apparently) whereas bifurcation is expected to be practised separately in different divisions, so permissive language in the rules is not problematic, it would be highly iniquitous if the criteria for granting preliminary injunctions were not to become uniform across the whole Court. Kevin Mooney appeared to suggest that we should trust the judges, but this moggy thinks that some criteria need to be clearly in the Rules if there is to be any hope of uniformity.
Here in particular was discussed paragraph 2 of rule 14, which states that where a local or regional division has two or more available languages, the statement of claim shall be drawn up in the language in which the defendant normally conduct its business. (This then becomes the language of the action). Kevin Mooney thought that this provision needed revisiting. Your IPKat commentator wondered whether each local division could have its own detailed rules on language, since that appeared to be some specific local oddities as to language requirements. Judging by the furrowed brows that greeted this comment, however, it seems to be an idea of low popularity.
So here you have a brief account of what went on. But make up your own minds! Think about the issues, watch the recording if you wish, and respond to the Consultation. (If you could tell the IPO how you have responded, they would be grateful, they said, so that they can keep track of UK sentiment.)
Kevin Mooney reports that most popular topics to respond on so far are:
Opt-out provisionscostProcedural appeals
all or some proprietors / licencees
EPO or Registry
Languages – Rule 14(2)
Hard-wired bifurcation (this is the idea that if you sue in the name of the licensee rather than the proprietor, a revocation counterclaim may be prevented by Art 47(5) of the UPC Agreement, but Rule 25.3 currently envisions circumventing this problem by allowing the proprietor to be joined to the action)
Rule 118 (what happens when the patent is found infringed but a validity action is still pending)
eBay provisions (whether final injection is as of right, or can be replaced by damages under certain circumstances – as in the US case Ebay v MercExchange).
If you want to discuss more before the consultation closes on 1 October, come the AIPPI event next week, Thursday 12 September, where your humble servant will join Kevin Mooney and Laura Starrs from the IPO.
Later events (CIPA Congress, and the two day conference "Perspectives on the Unitary (EU) Patent System" at Jesus College, Oxford) although doubtless excellent, will be too late for the consultation response!