From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 8 December 2014

More misinformation on the Unified Patent Court - this time from the Law Society of Scotland

This Kat was reading this press release from the Law Society of Scotland, and he choked on his catfood on the degree to which it is misleading and just plain wrong.  He has written in indignation before when politicians do this, but his indignation rises higher when it is lawyers who propagate drivel materials that lead to further misunderstanding.

To be clear, this Kat has no problem at all with the location of a local division in Scotland.  He does not wish to detract in any way from this desire.  But those who want one should be clear about what this involves.  So here are a few facts.

1) A local division based in Scotland will not be a "Scottish" division.  It will be an additional UK division based in Scotland.

2) The right to have such a division at all will come from the number of UK patent litigation cases, as set out in Article 7(4) of the UPC Agreement.

3) Its "local" judges will be "nationals of the Contracting Member State hosting the local division", ie British, not necessarily Scottish.

4) It will probably be entitled to two "local" judges on each panel, but again this will be because of the number of cases in the UK as a whole, not Scotland (which is probably just as well, since it seems doubtful on any view that Scotland has enough cases to permit two local judges).

5) There will in any event be one non-British judge on each panel

6) It will have nothing to do with the Court of Session. The IPKat cannot say this enough times, although it seems he may need to.  It will be an entirely independent legal entity.  Its local judges could however in principle be Scottish judges as well, although the practical details of part-time judges have yet to be sorted out, as have the constitutional issues in releasing national judges to participate in the Unified Patent Court.

With these principles in mind, let's see what is wrong with the press release.

Lawyers warn time is running out to secure new Scottish patent court [See 1 above.  Why is time running out?  The arrangements for local divisions could be made and changed at any time]

Solicitors and advocates say Scottish-based businesses could soon be forced to take patent disputes to London or Europe unless Scotland secures a local divisional court under the new European Unified Patent Court (UPC) system. [Yes, that is whole point of a unitary system. No-one will be "forced" to do anything "soon" - by any calculation it will be around 20 years before participation in the UPC is mandatory, even for European patents]

The warning follows the news that Ireland is poised to establish a local division of the new unified patent court, allowing Irish inventors and designers to raise actions to defend and safeguard their patented intellectual assets in their home country. 

From as early as 2016, the Unified Patent Court  will  be part of a new European patent system providing patent protection in 25 EU Member States on the basis of a single streamlined patent application. While London has already been allocated a section of the Central Division of the Court, alongside Munich and Paris, there is currently no firm plan to establish a local division of the court in Scotland. [There are pretty much no "firm" plans about anything to do with any local division]

The Law Society of Scotland and the Faculty of Advocates are urging the UK Government to take steps to designate Edinburgh as the location for a local division of the court. Failure to establish such a divisional court in Scotland will mean the Court of Session will not have any power to deal with any matter related to these new Unitary patents. [See 6 above.  Please.  Then re-read this nonsense.  The UPC will entirely replace the Court of Session and all other local courts for the matters within its exclusive jurisdiction.  That is the whole point.] This contrasts with the existing EU patent regime, under which the Court of Session does have jurisdiction. However, it is set to be phased out in favour of the UPC, meaning it will be more difficult and expensive for Scottish-based businesses to protect their patents under the UPC in future. [Err, we have all been told that the UPC makes litigation cheaper, by eliminating multiple litigation for the same European patent.  But apparently for Scottish-based businesses it will be more expensive.  Of course there is no guarantee that Scottish-based businesses will have their litigation in the local Division in Scotland.  The case might be in the Central Division.  Or a foreign local division.  By which I don't mean London.]

Gill Grassie, vice convener of the Society’s Intellectual Property committee, said: “It is great news for Ireland that a local division of the Unified Patent Court has been secured there. ["Secured"?  Ireland has decided to set up a local division.  The situations are not comparable] The justifications for this for Ireland, such as encouraging innovation, reducing the cost of enforcing property rights and, ultimately, job creation, equally apply to Scotland which has yet to be allocated its own local division. [Do they?  Explain how]

The UK Government has the power to designate the specific location of a local division within the UK with endorsement by the Administrative Committee of the Unified Patent Court and make the necessary delegated legislation. [Equally, however, the UK Government could establish a single local division with flexibility as to where it sits.  Is this not a possible option?]

Ms Grassie said: “Scotland punches above its weight as a centre for excellence for innovation and is home to a large and diverse array of high technology, intellectual property rich businesses operating in many sectors including, life sciences, renewables, aviation and defence. Many such businesses, including many SMEs, will rely upon patents to protect their valuable technology and innovation.  While discussions are ongoing between the UK Intellectual Property Office and the Scottish Courts Service, time is moving on and we are seeing other states such as Ireland and Germany establish local courts.” [Er what is this supposed to actually mean?  Neither Ireland nor Germany has actually even ratified the UPC, let alone "established" a local court.]

The Court of Session, which currently deals with patent disputes, has built up considerable expertise and experience in this area. However it will not have the power to resolve such disputes under the new system. [No, that is because we are setting up a new court system.  No existing national court will have the "power to resolve such disputes under the new system"]

Ms Grassie said: “Failure to maintain a dedicated local patent court risks damaging businesses that rely on patents to protect their valuable technologies and innovation.  [Really?  There is no evidence at all given for this. And there is no guarantee that litigation involving Scottish companies will happen in a local division set up in Scotland]

“Such a lack of local access to justice also risks conveying the impression to investors that the intellectual property of high tech industries is not of real concern to Scotland and that, in reality, it ‘does not do patents’. On the face of it, this would cut across the work over many years by the State’s agencies responsible for attracting inward investment in promoting the country as an ideal, cost-effective, competitive location for high-tech and knowledge-based enterprises.” [This also seems speculative at best.]

The Dean of the Faculty of Advocates, James Wolffe QC, said: “I congratulate Ireland on securing [See above - "secured" is a very odd word in this context - "decided to set up" is more apposite] a local division of the UPC, which will support business and innovation there. We must continue to press for the establishment of a local division of the UPC in Scotland. This would enable Scottish businesses to resolve disputes over patents locally, more cheaply and more easily. It would support Scottish business, particularly the SME sector, support the retention and development of expertise in Scotland, and support Scottish innovation and research and development”

The IPKat has seen much campaigning for a local Division in Scotland.  He finds it very odd that the one legal criterion involved in eligibility for local Divisions, namely the number of patent cases during  "three successive years prior to or subsequent to the date of entry into force of this agreement" has never been mentioned in any of the materials that he has seen.  Could we please have these figures for Scotland, so that an informed debate about setting up a Division there could be had?


Wouter Pors said...

If the UPC starts in 2016 and if the Scots want to have a second local division within the UK, they should start 300 new patent cases in 2015 (see Article 7(4) UPC Agreement). Maybe we can assist.

Wouter Pors
Bird & Bird

Anonymous said...

I don't know the figures for the number of patent cases brought before the Court of Session for the last 3 years, but a search through Court of Session judgments shows 15 judgments since 1999 which refer to the Patents Act 1977. Of course not all cases end up with a judgment, and not all opinions and judgments are published. Only where there is a significant point of law or particular public interest are the details published, and therefore searchable.

Darren Smyth said...

Dear Wouter

I just want to clarify that for Art 7(4) what matters is the number of UK cases, not the number in Scotland as such. I am sure you are aware of that, but I think readers may not follow this.

Kind regards


Anonymous said...

Well I do not want to jump to any conclusions, but maybe a Scottish local division may be the only one left in the whole UK after 2017 … as Scotland may be the only part left in the Community … ;-)

Wouter Pors said...

Dear Darren,

Yes indeed. And since it makes sense that there will at least be a local division in London, you need quite a number of extra cases to have a second UK division, which might then be in Scotland.

Wouter Pors
Bird & Bird

Anonymous said...

The opinion expressed in your last paragraph doesn't seem to tally with the comments made elsewhere in the comments on the press release. If a notional local division located in Scotland wouldn't be part of the Court of Session and wouldn't necessarily have Scottish judges, what does this matter?

Darren Smyth said...

Dear Anon at 18:52

Are you saying that the number of patent cases in Scotland does not matter? I think it clearly does, because, although it is not the legal criterion for the UK to be permitted a second division, it is highly relevant as to whether it would have any work to to do and therefore whether the amount of money taken to set it up would be justified.

It seems a very odd piece of information to be missing from a plea to have such a second local division.


Anonymous said...

Darren, I think you missed out a further comment - Scotland is not a "state".

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