Feline Felicity - Consultation on Draft Rules of Procedure for the Unified Patent Court

The IPKat has complained (vide IPKat passim ad nauseam, most recently here) about the short time given for consultations in relation to pending CJEU referrals, while celebrating some improvements in this issue, for example here.  Also, the Amerikat has been indefatigable in campaigning to bring the sometimes secretive EU legislative procedures relating to the Unitary Patent to the attention of those who will be affected by the system, so that we on whose behalf these laws are made get some opportunity to scrutinise and perhaps even comment on the proposals before they become black-letter law.  (vide IPKat passim, latest here and here).

So if today you were disturbed by caterwauling then it will likely be that you overheard the IPKat and Merpel celebrating Kat-a-whoop that a consultation has been launched over the latest draft of the proposed Rules of Procedure of the Unified Patents Court and not only YOU CAN COMMENT, but the consultation period is not less than THREE MONTHS! Hurray!

Many commentators including this moggy have pointed out that the success of the system depends critically on small points of procedure even ones as trivial as whether extensions of time are allowed and on what grounds. This is literally a once-in-a-career opportunity to have your say. The IPKat begs you not to squander it.

There is no escaping that the document of the draft Rules of Procedure is long - close to 400 Rules - but this is a complete, new and self-contained litigation system.  With that in mind, it is actually commendably concise.  The IPKat has not read it all in detail, but notes a few points that you may particularly wish to consider:

  1. Sunrise period for opt-out (already noted here on the KNSH blog) - see Rule 5(9)
  2. Whether there should be permitted appeals on procedural matters (which will give the Court of Appeal more scope to develop in a uniform manner procedural norms, resulting in greater consistency, but at the cost of increased delay for the case at hand ) - see Rule 220
  3. Fees for opt-out of the jurisdiction of the UPC during the transitional period - what level should they be? (and should there be a fee to opt back in again?) - see Rule 5.  Merpel notes that these opt-out fees seem to be the only source of money available to finance the (allegedly self-financing) UPC system other than the court fees themselves 
  4. Possible additional court fees for counter-claim for invalidity (revocation) of a patent by defendant? - see Rule 26
  5. Bifurcation - should injunctive relief be available before the validity of the patent is finally adjudicated?  - see Rule 118
  6. Bifurcation - What should be the conditions for validity to be heard separately from infringement action? - see Rule 37

If you have other points that seem worthy of consideration, please add to the comments so that all of us may collectively consider and then comment on the important issues.

Information about consultation, including a link to the 15th and latest draft of the proposed Rules of Procedure of the Unified Patent Court can be found at:


Comments should be sent to secretariat@unified-patent-court.org in order to be taken into consideration, but if you would like to leave thoughts here too, the IPKat and Merpel would be delighted.

Feline Felicity - Consultation on Draft Rules of Procedure for the Unified Patent Court Feline Felicity - Consultation on Draft Rules of Procedure for the Unified Patent Court Reviewed by Darren Smyth on Tuesday, June 25, 2013 Rating: 5


  1. I am still wondering whether or not I will be allowed to represent before the UPC as a German patent attorney, as German patent attorneys are allowed to "represent before a court of a contracting state" (Federal Court for Patents and the Supreme Court in patent/trademark matters excluding infringement matters). Further, since ten years or so German patent attorneys are required to have a degree in general law (admittedly generally involving less rigorous and detailed studies than those that are required for attorneys-at-law) and may as such be referred to as "lawyers".

  2. I could write pages on this, but I'll restrain myself, and just comment on Merpel's point on financing the UPC. I was interested to see that in the latest revisions to the Rules a few more sources of income for the UPC have snuck in.

    Firstly, Rule 150 which relates to separate proceedings for cost order, now states that "The cost order shall cover costs incurred in the proceedings by the Court such as costs for simultaneous interpretation and costs incurred pursuant to Rules 180.3, 188, 201 and 202". So it seems the losing party will be paying some of the court's costs as well as the victor's.

    Secondly, Rule 370 now mentions a fee for filing a protective letter. Previously, this fee was only listed under the Court of Appeal fees, and not under the Court of First Instance fees.

    I'm not too wild about the fee for filing a protective letter myself - yet another one for the pro-patentee list!

  3. A good way make sure that CJEU come to our attention fast,would be the addition of a rule requiring the court to publish (including questions and case identifiers) any referrals to CJEU on their website (in a timely manner)...

    That would give many of us a headstart in advising our governments on taking action...


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