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
Bifurcation & the UPC: Much ado about something? Bifurcation & the UPC:  Much ado about something? Reviewed by Merpel on Saturday, April 06, 2013 Rating: 5


  1. Sorry to not answer about bifurcation but I'd like to stop for a minute on this sentence: “In a letter to representatives of key stakeholder groups”, because this is the whole and unique source which this post is based, as all other infos about moves on the installation of the unitary patent/UPC system since regulations have been voted and the agreement signed.

    Who are these stakeholders? The names are public: The Rt. Hon. Professor Sir Robin Jacob (President of the Association of judges in Intellectual Property);
    Thiery (sic, should be read Thierry) SUEUR (Chairman of the Business Europe Working Group on patents); Christian Gassauer-Fleissner (President of EPLAW);
    and Tony Tangena (President of EPI).

    It should be recalled that they are the very people that were pushing for a deletion of Arts. 6-8 from the unitary patent regulation. Something that was finally accepted by nobody else than heads of States and governments in June 2012, and then declared vehemently as contrary to the EU Treaties and rejected by the European Parliament. They (or their predecessors, for EPLAW and EPI) were the very people who have worked on the EUUPC, the previous plan for a unified patent jurisdiction, which has been judged by the CJEU as non-compliant with EU Treaties for nothing less than altering the essential character of the powers conferred on the institutions of the European Union and on the Member States which are indispensable to the preservation of the very nature of European Union law.

    In clear, and with all due respect, these people are the loosers who have waste so many time and resources (leaving aside the Amerikat nights and days in 2011-2012) during the last decade to achieve a proper EU patent system.

    Why are they the recipients of this letter? Why are they considered as key stakeholders?

    Because, they (and some others, which I would call the patent microcosm) have been the actual drafters of this unitary patent/UPC system. No surprise that this system has been drafted to favour their interests firsts.

    But what about everybody else? What about innovators? What about the economy? What about the European society at large? Isn't it the very purpose of the patent system to foster innovation and economic growth for the benefits of the society? (At least, this is how, Commissioner Barnier has sold this project written by the patent microcosm.)

    Fortunately, we are now sure that the unitary patent system will be reviewed by the CJEU, both for the enhanced cooperation procedure and the substantive regulations. Given the many legal issues that have already been raised with regard to the unitary patent regulation and the UPC, and given the poor record of these people in EU legal requirements (including Sir Jacob, sorry dear British kats, he's maybe a wonderful patent judge, but his opinions about EU law have proven to be quite limited, according to the EU Scrutiny Committee), there is no question now that the unitary patent/UPC system will never enter into force.

    I let you go on debating about bifurcation, but bear in mind that such discussions, however interesting they are, are purely theoretical with regard to the unitary patent/UPC.

  2. @Gibus: I still do not understand why the UPC Agreement would not enter into force, even if the two Regulations were rejected by the CJEU.
    The patent "package" would then be simply "unpacked".

  3. @Patent Robot : you're right, except that there are also strong legally issues against the UPC and it seems unlikely that this international agreement would escape to be rejected together with unitary patent regulations.

    Nevertheless, form a pure legally point of view, you're perfectly right: the CJEU is only asked about the legality of the enhanced cooperation procedure and the 2 regulations on the unitary patent. The UPC could survive to this exam. But either the CJEU takes the opportunity to also reject the UPC (even if not asked for) or any judgement by the UPC would then be open to an opposition before the CJEU.

    The value of the patent system is based on the trust that granted rights can be enforceable. The legal fragility of the UPC takes away this trust. Suffice to observe how legal firms are currently focusing on the "opt-out" procedure of the UPC. With the UPC unpacked from unitary patent package, and therefore only applying to classic European EPO patents, trust into UPC will be close to zero among patent applicants. So in practice, everybody will opt-out and the UPC won't never become effective. Or if it does nevertheless, its judgements would be subject to a review of the legality of the agreement.

  4. Hasn't Gibus got his own blog? Im sure if I was interested in hearing his views so often I would follow his own blog rather than logging into ipkat.

  5. I too have a (rarely read) blog. See here for what behaviour might result from bifurcation.

  6. I think you mean "for all intents and purposes".

  7. Meldrew says he has a blog. I don't believe it!

    Many a time when I read the claims of a patent and wonder how on earth it was granted, I take a look at the nationality of the applicant and find they are German. There are of course many things that can be said about this comment, one if which is that examiners who live in Germany, and likely are German, have an above-average tendency to grant unworthy patents to German applicants.

    The statistics of Meldrew can be seen as evidence supporting such a proposition.

    Only on thing is more astonishing. How does Gibus get past the 'please prove you're not a robot' test?

  8. Sad that this blog discriminates against me...


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