The UPC and what it means for your practice - AIPPI UK Event Report

This Kat was delighted to be invited to speak at this event last night, as readers will have seen from his previous posts (here and here) on the subject of the Unitary Patent and Unified Patent Court.  He was even more delighted that Christina Flanagan, a trainee at Freshfields [was] volunteered to write a report of the event so that he would not have to.  Thank you so much, Christina.  So here, hot off his email inbox, is the report:

AIPPI UK Event Report: The UPC and what it means for your practice

Kevin Mooney, Partner, Simmons & Simmons
Laura Starrs, Policy Adviser, UKIPO
Darren Smyth, Partner, EIP, and IPKat

12 September 2013, 6pm

Venue: Freshfields Bruckhaus Deringer LLP (Chair: Justin Watts)

One can tell that the Unified Patent Court is the issue of the moment.  A capacity crowd packed out AIPPI UK’s event on 12 September at Freshfields to hear from three top speakers, reports Freshfields’ trainee Christina Flanagan.

Unitary Patent and the Unified Patent Court – Kevin Mooney, Partner, Simmons & Simmons

Kevin Mooney opened the presentations, sharing his experience as chair of the Drafting Committee of the Rules of Procedure. He highlighted the main challenges for practitioners, and noted that EU-wide, multilingual litigation is going to change client and intra-firm relationships. 

Kevin described some of the disincentives inherent in the UPC which, in the short term at least, may lead patentees to opt out of the system. These include enhanced litigation risk and the inability to phase geographical protection through the selective use of renewal fees. All three speakers noted that official fees will play a crucial role in company strategy, and that there is no useful information at present on the application or renewal fees for unitary patents or for opting out of (or back into) the UPC system.

Kevin supported the availability of appeals of procedural issues, a point central to developing uniform jurisprudence on procedural matters. He noted that the UPC will need to be left with wide discretion but that in turn needs to be developed and controlled through the development of appellate case law.  While bifurcation is still an issue, Kevin noted that in practice it may be rare.  German bifurcation stems from a constitutional limitation on jurisdiction; he questioned whether a judge with power to hear the whole dispute would voluntarily carve part off to another jurisdiction.

Kevin highlighted the widely drawn Rules on privilege as a triumph for the Drafting Committee. 

Implementation of the UPC – Laura Starrs, UK Intellectual Property Office

Laura Starrs drew on her roles on a number of the UK implementing committees to give the audience an insider’s view of the implementation process.

The Preparatory Committee includes members from all UPC signatory states. When not devoting its energies to considering how it will pay for itself, the Committee heads up a series of working groups which will ensure that the UPC is a functioning court, with a full staff and a series of appropriate venues, by the implementation date.

The UK has already begun the process of amending national legislation in advance of ratification. Provisions in the IP Bill, passed in the House of Lords and due in the Commons by October, will allow for the necessary amendments to the Patents Act.

Laura reminded the audience that the UPC’s Rules of Procedure are out for consultation until 1 October 2013 – for comments, secretariat@unified-patents-court.org - and that the views of both firms and individuals are keenly sought. The IPO would be grateful to be copied into communications with the Preparatory Committee in order to get an overview of the key issues for UK IP professionals (please email to UnifiedPatentCourtTaskforce@ipo.gov.uk) .

The Unitary Patent and the Unified Patent Court: the choices and how to make them – Darren Smyth, Partner, EIP

EIP partner and IPKat, Darren Smyth, began his talk by tackling head-on a couple of common misconceptions regarding the unitary patent. Firstly, unitary patents will not become compulsory after the seven year transition period, although eventually the UPC will have jurisdiction over all European patents – classic or unitary. Secondly, the unitary patent is not a designation of the European patent application process, but rather a conversion taking place one month after grant.

Darren discussed how companies will wish to protect different patents within their portfolio in different ways going forwards: he suggested that key pharma “crown jewel” patents may be too precious to risk in an untried judicial system, whereas bulk holders of patents will be particularly sensitive to the, as yet undetermined, costs of the UPC.

The national route to protection will eventually be the only way to avoid the jurisdiction of the UPC entirely, leading Darren to raise the possibility of an increase in national filings, particularly in the UK and Germany where the patent offices can be quicker, cheaper and at least equal quality compared with the EPO. The speakers wondered whether the prospect of double protection, not currently available, might be revisited in response to patentee demand?

Darren touched briefly upon the “Malta / Croatia problem” set out in full here. The speakers were agreed that a literal interpretation of Article 3(1) of the Unitary Patent Regulation can only mean that a significant proportion of European patents will be blocked from becoming unitary patents. There was some suggestion that the ECJ might yet find a way of interpreting the Regulations which gets around this unintended consequence.

Questions considered the availability of regional courts, three of which are being considered, the importance of identifying suitable judges, Scotland’s attempts to secure a local division, the number of countries that will not have national divisions and will therefore cede jurisdiction to the central division, and the absurdity of the existing language regime.

The presentations are now available on AIPPI UK's website.

This Kat would like to thank his co-presenters and the committee of AIPPI (UK), in particular the chair of the event Justin Watts, for their warm and kind hospitality at this most interesting and stimulating event, and would again like to remind readers to respond to the consultation!