From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats VerĂ³nica RodrĂ­guez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 23 May 2016

Which national laws will UPC witnesses be subject to? And more "fun" questions from the draft UPC Code of Conduct

Sorry, what did you say, Merpel?  
The AmeriKat does not always listen to everything Merpel says and, indeed, even less often when Merpel tries to boss her around (which is frequently).  Nevertheless, it seems someone was listening to Merpel following her post on the CCBE's letter on the draft Code of Conduct for patent practitioners before the Unified Patent Court (see here).  Last week the Preparatory Committee published the current draft of the Code of Conduct (see here).  In the accompanying statement, the Preparatory Committee stated that:
"EPLAW, EPLIT and epi has taken on the task to help the Preparatory Committee develop a draft Code of Conduct for representatives who appear before the Court, as referred to in the Rules of Procedure of the Unified Patent Court. A draft Code of Conduct was presented to the Preparatory Committee at its 15th meeting on 14 of April 2016 where it was in general well received by delegations. Thereafter work has continued and the draft has been further improved. Further work is expected in the coming month before the draft is tabled again at the meeting of the Committee planned for 30 of June."
The Background section of the draft states that it is subject to any additional amendments of the Rules of Procedure.  It continues:
"Some observations in this respect were, however, made with regard to R. 291 (1) RoP while drafting the CoC. R. 291 (1) relates to the exclusion of representatives from the proceedings and, as presently drafted, would seem to compromise the position of both a Client and his/her Representative in ongoing litigation. 
Presently, until any possible future joint disciplinary body is founded, a mechanism for referring such a matter to a relevant body for the respective national lawyers or the epi would seem more appropriate. 
The draft CoC was discussed in the 3rd UPC Expert Panel Meeting in Paris on September 18th, 2015, where valuable feedback was received and thereafter incorporated. The draft Code of Conduct was presented to the full Preparatory Committee at its 15th meeting 14 of April 2016 where it met with general approval from Member States delegations. Furthermore, EPLAW, EPLIT and epi are grateful that experts in particular from IPLA and CCBE proposed amendments to the draft CoC in April and early May 2016, which are equally incorporated in the current version. All this was helpful to further improve the quality and acceptance of the CoC. In the coming weeks, EPLAW, EPLIT and epi will continue discussing the draft with interested parties."
The AmeriKat notes the reference to "under applicable law" in respect to witnesses of fact and party experts (adopted from the Rules).  For example, para 3.1. states:
"A Representative shall ensure that witnesses are at all times fully informed about their obligation to tell the truth and of their liability under applicable national law in the event of any breach of this obligation."
Under the Rules of Procedure, witnesses have a duty to tell the truth.  For example, Rule 175(2) provides that written witness statements shall be signed and include a statement of the witness that "he is aware of his obligation to tell the truth and of his liability under applicable national law in the event of any breach of this obligation.".  Rule 178(1)  provides that before the court hears witnesses, the witness needs to provide a declaration that the evidence they will give shall be the truth. Further, Rule 179(4) refers to the possible sanctions for giving false evidence as follows:
"The Court may decide to report to the competent authorities of the Contracting Member States whose courts have criminal jurisdiction in case of the giving of false evidence on the part of a witness." 
The same rules outlined above with respect to witnesses of fact also apply to experts.  Under Rule 181(2), experts are, when summoned under Rule 177, reminded that the they have a duty to:
  • assist the Court impartially on matters relevant to his area of expertise which overrides any duty to the party retaining him; and
  • be independent and objective, and shall not act as an advocate for any party to the proceedings.
Court appointed experts are subject to their own rules and duties (see Article 57 of the UPCA and Rules 185-189).

To the AmeriKat this immediately begs five questions:
  1. What applicable law is a witness governed by? In the case of experts, this should be relatively straightforward in that they may be governed by the terms of their engagement, but what about witnesses of fact? 
  2. Does paragraph 3.1 of the Code of Conduct mean that a representative has to actually substantively advise witnesses on their liability under applicable national laws (whatever that is)? Might such a requirement be in conflict with the representative's national code of conduct?   
  3. Will witnesses/experts involved in the same action, but subject to different national laws, create an uneven playing field in terms of evidence?  
  4. In relation to criminal offences, how does national criminal jurisdiction even pertain to the conduct of witnesses in the UPC?   
  5. How on earth is this going to work in practice?  

What a fun Monday afternoon research task for someone....Merpel?  Are you awake?  Do readers have any clever solutions?


Proof of the pudding said...

So has yet another important area been discovered where the UPC Agreement is (but should not be) silent / unclear?

I have no answers but do have another question. My question is this: will the UPC be competent to hear matters for which, according to Article 32(2) UPCA, the national courts remain competent?

The presumption is that such matters would be subject to national law - and therefore that the UPCA would not have jurisdiction. However, the UPCA clearly contemplates shared competence in other (infringement) situations where the national courts would apply national law.

Thus, given that Article 32(2) UPCA does not stipulate that the national courts have exclusive competence for matters that are not listed in Article 32(1) UPCA, then shared competence remains a distinct possibility.

Any thoughts?

Anonymous said...

hmm... any forensic engineers out there that would enjoy to become an expert witness?

Meldrew said...

Another problems for the UPC

What is the patent term for a European Patent?

This is a simple question, and the answer appears simple, 20 years from filing [Article 63(1) EPC]. Extensions to that term are only permitted in limited circumstances [Article 63(2) EPC].

However, Article 63(1) EPC appears to have been interpreted differently in different Contracting States.
In some countries the term is considered as expiring on the day before the anniversary (“day before” interpretation).
In more countries the term is considered as expiring on the anniversary (“anniversary” interpretation).

As the EPC may be presumed to have one correct meaning, then either:
• the “day before” countries are in breach of Article 63 EPC by virtue of providing a term one day short of the full 20 year term under Article 63(1); or
• the “anniversary” countries are in breach of Article 63 EPC by virtue of providing a term one day longer than the full 20 year term under Article 63(1) EPC and outside the limited exceptions of Article 63(2) EPC.

In either case, the question arises of what interpretation the Unified Patent Court (UPC) will apply in respect of the European Patent with Unitary Effect.

If the UPC adopt the “anniversary” interpretation, then it will be an incentive for patentees to go for unitary protection, since an extra day’s patent term will be achieved in those countries such as FR and GB that follow the day before interpretation.

If the UPC adopt the “day before” interpretation, then it will be an incentive to not go for unitary protection, since by not choosing unitary protection, an extra day’s patent term will be achieved in those countries such as DE that follow the anniversary interpretation.

One might think that the uncertainty will disappear when the UPC has adopted either interpretation. However, the UPC will also have jurisdiction for non-opted-out bundle patents. It is difficult to imagine that the UPC will consider granting an injunction with different terms according to different national laws, when the EPC prescribes the term of European patents.

Having European patents of different term in any one jurisdiction appears unsound, since then the same provision of the EPC (Article 63 EPC) may be interpreted differently according to whether a patent is a bundle patent or a unitary patent.

What will be interesting is what might happen if, for example, the UPC hears an infringement action covering “day before” and “anniversary” countries and grants an injunction expiring on the anniversary date. In the UK this would effectively overrule the term provided by statute by providing an extra day’s monopoly.

It would be really nice if, after over 35 years, the term of European patents could be harmonised. This seems a pretty basic issue.

ArmchairAttorney said...

I very much doubt that the decision to go Unitary or go Bundle will be determined by the possibility to obtain an additional 0.3% of a year's monopoly right at the end of the patent term. The question will of course have to be answered, but then the UPC will have answered it and that will be that. Any injunction is an order of the Court, and will run as long as the Court decrees, whether uniformly across the contracting states (likely) or with different endpoints in different states (unlikely). Although I see the potential for uncertainty, I do not think that that uncertainty will be meaningful. The statute, for example in the UK, is already overruled by the Unitary Patent being an unitary right, not a domestic right. That is part of the harmonisation created by the creation of the Court and the Unitary Patent

Leo Steenbeek said...

In an attempt to answer AmeriKat's questions, my guess would be that for a UPC division located in country X it holds that the laws of that country X apply to witnesses. This results in the same law applying to all witnesses.
It cannot be a breach of any code of conduct to inform a witness that the witness is expected to tell the truth, the whole truth, and nothing but the truth, or anything similar to that.
As the UPC is equated to a national court (see e.g. art. 1, 21 UPCA), I would also guess that national law of that country X relating to criminal sanctions for witnesses also applies to UPC witnesses. If the UPC informs the national prosecutor's office of any wrongdoing, I take it that that national office will take the appropriate action.

Meldrew said...

Armchair Attorney -

"That is part of the harmonisation created by the creation of the Court and the Unitary Patent"

Such an assertion does not survive the dog's breakfast that is the
UK implementation. Providing for different laws of infringement depending upon whether you have a national patent, a European patent (UK) litigated through the UK courts, or a unitary patent or European patent (UK) litigated through the UPC, indicates that we cannot harmonise within one country, never mind across the EU.

As for whether 0.3% of of a year's monopoly right at the end of the patent term is worth thinking about, that depends upon whether your sales are in pennies or in $billions. For a successful pharmaceutical, that 0.3% of sales in UK and France ("day before" countries) could be very large.

See this document showing NHS purchases alone of one drug approaching £1m a day. Every little helps....

Proof of the pudding said...

As there have been no responses to my earlier question, perhaps I ought to provide a specific example for Kats to get their teeth into.

Consider the grant of a national SPC application. If a proprietor objects to the manner in which the SPC is granted (e.g. due to an objectionable product definition or an inadequate term), then an appeal can usually be filed (eventually) at a national court.

What will happen in this situation after the UPC comes into force? So long as not opted out, the national SPC would fall within the scope of application of the UPC Agreement. It would just not fall within the exclusive competence of the UPC. Further, just because it is normal for appeals against SPC grants to be filed at national courts, does this mean that the UPC would find that it does not have jurisdiction to decide upon the matter?

Also, would the UPC have competence to decide upon appeals against decisions made by the UK IPO in connection with a not opted-out EP (e.g. an opinion or a revocation under Section 73(2))?

The Rules of Procedure of the UPC do not contemplate the handling of such matters by the UPC. However, is this of any consequence if the UPC Agreement (as appears to be the case) leaves the door open to the UPC hearing at least some matters covered by Article 32(2)?

Darren Smyth said...

Dear Proof

Since no-one else has responded, I will express my opinion. I interpret Article 32 UPCA as creating a clear dividing line between the competences of the UPC and national courts. The UPC is competent for those matters listed in Art 32(1), and for those matters its jurisdiction is exclusive – ie national courts cannot exercise jurisdiction over those matters. Art 32(2) then says that for everything else, national courts remain competent.

I think Art 32(2) has to mean that national courts remain exclusively competent – the treaty is ceding national jurisdiction to a new court, and it can only be intended that those competences specifically listed in Art 32(1) are transferred. The lack of use of the term “exclusive” does not alter that in my opinion – the status quo is being affirmed in Art 32(2) and that is exclusive competence.

Shared competence is only contemplated as a transitional provision in Art 83. A transitional provision is by its nature an exception, and that exception cannot be used to construe the main agreement differently from its clear terms. I also note that Art 83(3) refers to “exclusive competence” of the UPC even though that competence is not actually exclusive in the period being considered. So the UPC competence is always referred to as “exclusive competence”. It either has “exclusive competence” or it has nothing.

So I do not think the UPC will be competent to hear matters for which, according to Article 32(2) UPCA, the national courts remain competent, under any circumstances, and I think this view puts a strained interpretation on the UPCA. And so no, you cannot appeal to the UPC against refusal of an SPC by a national patent office.

Best wishes


Proof of the pudding said...


You make some good points. But would it really have killed the authors of the UPC Agreement to make things crystal-clear, for example by instead stating that the UPC is not competent to hear matters that do not fall within the exclusive competence of the court (as defined in Article 32(1))?

I am sure that there is a good joke relating to competence somewhere amongst all of this!

Observer said...

The point about exclusive competence on certain points is an important one and has to be taken into account.

Why not have a look at what happens at the EPO?

There, witnesses can request to be heard in the court of their country of residence, or have to repeat their statement in a binding form before a court in their country of residence, see R 120EPC.

As the judicial cooperation applies only to contracting states, the national competent court can only be a competent court in a contracting state to the UPC. The same conclusion can be inferred from R 179(4)UPC which clearly and unambiguously refers to contracting states.

Although it could be the country in which a local court sits, should it be the country in which a branch of the central division sits (FR, GB, DE)? Depending on the technical field, a different national law would apply. Is this really the right approach?

Bringing back everything to the country of residence of the witness is a pragmatic way to solve the problem of the competent jurisdiction.

It is true that there will be more surprises when the UPC ball starts rolling.

Just another question about some problems brought about by the UPC:

The UPC and the Boards of Appeal of the EPO can decide on the validity of a patent.

What if case law of the UPC and case law of the BoA diverge in certain points? Which one should prevail? A UP is a patent granted by DG1 and members of DG1 have to look at the case law of the BoA and certainly not that of the UPC. What then?

When you see how some G decisions of the EBoA have been clearly ignored by national courts, even the highest ones, or the latter claimed their were following the G decision although that they actually did not so, the question is not purely theoretical.

Darren Smyth said...

Dear Proof
I think that there are many drafting infelicities in the UPCA, among which Art 32 is far from the most egregious. Art 83 refers to the "exclusive jurisdiction" of the UPC in the very Article that is busy making that jurisdiction non-exclusive. But it was a tricky document to draft, and so I think that some imperfections would be inevitable.

Dear Observer
I am afraid that I don't fully understand your points, but I wonder if you are talking about another level of exclusivity, namely whether when the competence lies with national courts, a single national court is exclusively competent. I don't think that is the case even now - for example patent infringement is normally decided in the country where the infringement occurred, but actually there is nothing to stop courts in principle from considering infringement in other jurisdictions, as happened in Actavis v Lilly, where the Patents Court in London granted declarations of non-infringement in respect of France, Italy and Spain. The conditions to be met are unusual, but it can happen in principle.

For both civil and criminal law there are, I understand, rules of international law that determine where a civil or criminal act is justiciable. According to my understanding, they don't necessarily lead to a unique answer. But in any case, since these rules exist already, I am not sure why the UPCA would need to provide its own rules. So I think that Rule 179(4), to which you refer, states "whose courts have criminal jurisdiction" because which court that is can already be determined by international law. I don't see this as a problem. If I have misunderstood the points you were trying to raise, please forgive me.

I do agree that there is nothing to compel convergence of jurisprudence between the UPC and the EBA, or, indeed, of national courts to either of these. I just hope that both organs will consider that they need to respect each others' approaches, otherwise there will indeed be potential for some chaos. That also is true even now with respect to national courts and the EBA, and while there have certainly been some divergences as you point out, I think the general trend in most fields is an attempt at convergence.

Best wishes


Proof of the pudding said...


Yes, Article 83 is particularly problematic. However, that is hardly an excuse for Article 32(2) completely failing to say what (in your view) was meant. Indeed, given the much greater simplicity of the concept that is supposed to be embodied in Article 32(2), I would say that it may even surpass Article 83 in representing an egregious drafting infelicity.

It is perhaps unfair of me to criticise, as it is perfectly possible that the authors were under immense time and/or political pressure during the drafting process. However, here we face the problem that the lack of access to preparatory materials for the UPC Agreement makes it hard to interpret what is meant by provisions suffering from "drafting infelicities".

We could perhaps look to the (obsolete) European Patent Litigation Agreement as representing relevant background to the UPC Agreement. There are statements in the draft Litigation Agreement that could perhaps be taken to support your view. However, is there a strong enough connection with the UPC for support to be sought in such a separate Agreement?

Observer said...

To Darren,

If there are mechanisms to decide under international law where a civil or criminal act is justiciable, let it be decided which court is competent in the matter. What is however disturbing is that it does not necessarily lead to a unique answer.

I am however still of the opinion that it would be better if the UPC clarifies the matter. Do you want something going along the same line or not? The UPC should decide what it thinks fit, and it could in my opinion only be a court in a contracting state of the UPC. The system works fine at the EPO why not be pragmatic and take it over.

That an attempt at convergence is highly desirable, but when you see how some high courts have decided, you wonder if convergence is anything but lip service.
Two examples:
1) BGH X ZR 161/12 (wound treatment device) were G 1/93 is simply ignored: when assessing patentability ignore the added matter....
2) When you also see how the Paris TGI and Court of Appeal interpret the EPC, you wonder if there will ever be convergence. I am thinking of cases with computer programs, dosage regimen or confidentiality to name only a few.

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