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Monday, 9 December 2013

Unified Patents Court - One Hurdle Cleared; Many more to go...

This moggy has been posting a lot about the Unified Patents Court (and indeed the Unitary Patent) this year.  He tries not to post every little development, but now a few have come along and it seems time, dear readers, to give a little update.

Alas the wheels of EU legislative process are largely hidden from mere moggies and it is not always easy to see what is going on until after the event.  But on Friday there was released this Press Release from the European Commission, announcing that "Justice Ministers have today reached agreement in record time on a European Commission proposal to complete the legal framework for Europe-wide patent protection."  This is the need to amend the Brussels Regulation to accommodate the UPC framework.  This hurdle required to implement the UPC was reported by the IPKat back in January, but generally does not seem to have received the attention it deserves.  Speculation that the necessary amendments would take some time to achieve, although not ill-founded, now probably needs updating since the reported agreement has been reached in "record time".

According to the press release, "The Parliament’s Legal Affairs (JURI) Committee is expected to vote on its report in February 2014, with a final plenary vote expected the following month."  So this is all likely to be done and dusted rather quickly.  This amending legislation is largely technical in nature, so it is not likely to be the forum for controversy over the UPC and the Unitary Patent as such to be aired.

Naturally the press release contains the usual misleading drivel.  At this paragraph the IPKat wept:

The figures speak for themselves. In the United States, in 2011, 224 000 patents were granted, in China 172 000 while in Europe only 62 000 European patents were delivered. One reason for the difference is the prohibitive cost and complexity of obtaining patent protection throughout the EU’s single market. At present, someone seeking to obtain Europe-wide protection for their invention has to validate European patents in all 28 EU Member States. The patent holder may become involved in multiple litigation cases in different countries on the same dispute. But this will change in the near future thanks to the agreement on the unitary patent package.

How may people reading this will conclude that there will be no change at all in the procedure from application up until grant, and that the post-grant procedures will probably also be more expensive for the Unitary Patent than a current European patent validated in UK, France and Germany only, which is the comparator most relevant to actual current practice?

This Kat has also been reporting on the progress of the selection of appropriate judges for the UPC.  He has heard that 1300 expressions of interest have been received, and are being considered by the Advisory Panel, chaired by Sir Robin Jacob.  This moggy was fascinated to read this blog by Miquel Montañá, Clifford Chance pointing out that "Not one single candidate out of 1300 applications fulfils the conditions required to be a candidate judge at the UPC".  How can this be? Well, until the UPC comes into force, it has no "Contracting Member State" and so the requirement to be a national of a "Contracting Member State" as defined cannot be fulfilled.  The IPKat is pretty sure that this can be overcome pro tem by creative interpretation, or "Purposive construction" as we call it in the UK.

What does not yet seem to be clear is according to what criteria the 1300 expressions of interest will be evaluated (beyond the black-letter statutory criteria).  Will transparency in EU lawmaking procedures is too much to hope for, at least the evaluation of the judicial appointments could perhaps be clear to all.  Merpel has been dispatched to the corridors of the Preparatory Committee and other organs of interest, and will report if she finds out anything of interest to our dear readers. But naturally both Merpel and the IPKat welcome any news whether by posting comments or by email.

9 comments:

Roufousse T. Fairfly said...

How may people reading this will conclude that there will be no change at all in the procedure from application up until grant,

What about provisional rights under Article 67 EPC?

Where should one apply for provisional relief against the alleged infringement of a still pending EP application?

The venue would be IMO the competent national court under the existing regime, since the UPC's responsibility would only begin after grant upon being elected.

Would you have to run two separate sets procedures for recovering both pre-grant and post-grant damages?

I'm a robot said...

ARTICLE 32 UPC

Competence of the Court

(1) The Court shall have exclusive competence in respect of:

[...]

(f) actions for damages or compensation derived from the provisional protection conferred
by a published European patent application;

Darren Smyth said...

Dear Roufousse, thank you for your comment. I am a Robot has pointed to the legislative answer to your question. Conceptually, the point is that the UPC has exclusive jurisdiction over BOTH bundle European patents as well as Unitary patents. So even though the patent may only become unitary after grant, the UPC is competent pre-grant. The exclusive jurisdiction over bundle European patents subject to a transitional period where it is not exclusive (shared with national courts) and capable of being opted out from; this does not apply to Unitary patents for which the jurisdiction is truly exclusive.
My understanding is that most countries do not allow an action to begin until after grant in any case - certainly that is the UK practice. Even where legally possible, I think that actions based on a pending application, while that application is pending, are rather rare. But it is interesting to consider what the approach of the UPC will be - I suppose we shall have to wait to find out. I do not recall seeing anything so far specifically about this point. Maybe our other readers may know.
Darren

ron said...

According to the EPO's most useful booklet "National Law relating to the EPC", in addition to the UK, the only states which are explicitly stated to only allow action to commence after grant, are Ireland, Romania, Slovenia, Switzerland/Leichtenstein, and Bosnia-Herzegovina.

States whch allow action to be initiated befire grant, but stayed until after grant, are Cyprus, France, Greece, and Hungary.

The entries for the remaining states confirm that action may be taken, generally for reasonable compensation only, but are silent regarding when action may be commenced or stayed.

Anonymous said...

Ron: Interesting.

If the defendant is attacked in UPC based on a pending application, do you think he can rely on Ireland law and ask that the action be dismissed ?

Ashley Roughton said...

There is absolutely no evidence (at all) to support the commission's statement.

Roufousse T. Fairfly said...

Thanks, I wasn't sure if this question of mine wasn't an idle one.

I know that pre-grant enforcement is extremely rare, if only that the vast majority of applications are not in order for grant at their publication, and that applicants are not keen in drawing too much attention before the opposition delay runs out. Those who are get granted pretty quickly anyway.

I believe that Art. 67 found its way into the EPC to mirror the practice which developed in Germany in the 1960s. Prosecution delays were quite long (what's new?), and pending applications weren't published systematically, so applicant got into the habit of filing parallel Gebrauchsmuster (petty) patents, providing provisional rights. This clogged even more the DPA. Provisional rights under the EPC are roughly equivalent to those of a petty patent: the scope of protection is determined a posteriori.

If the UPC could actually be seized prior to grant, then there might be another potential problem, as I can't see anything in the draft UPC agreement excluding the questions of entitlement from its purview.

Article 1 Unified Patent Court

A jurisdictional system for the settlement of litigation related to European patents and European patents with unitary effect is hereby established. To this end, the Unified Patent Court is created


The Unified Patent Court is a court common to the Contracting Member States of exclusive competence on their territories for European patents with unitary effect and European patents.


Where is "litigation" defined? I would expect wording carving out Articles 60+61 EPC and the Protocol on Recognition. Or is this implicit?

And there is still no public discussion about the 800 lb. gorilla, i.e., money.

Roufousse T. Fairfly said...

Oops, sorry, I was looking at the wrong document. Entitlement isn't part of the UPC.

Darren Smyth said...

Dear Roufousse.

What the UPC has competence over (ie the answer to your question about the definition of "litigation", I think) is in Article 32 of UPC agreement. 1(f) states:

"actions for damages or compensation derived from the provisional protection conferred
by a published European patent application"

So provisional protection is definitely part of the remit. But the rules I think envision only this as part of the calculation of damages (see Rule 125 of the draft Rules of Procedure).

I cannot find anything that says explicitly whether or not an action can be begin before grant of a patent, and, if so, what happens.

A lot of us are talking about money, even publicly, but the problem is we don't have any facts yet!

Best wishes

Darren

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