Event Report: BIE Symposium raises questions on Arrow declarations in the UPC

Team Netherlands get together to discuss
key UPC issues 

It is a rainy morning in New York as the AmeriKat contemplates how limited sun the sunrise period of the Unified Patent Court (UPC) has seen both here and in Europe.  But for what we are lacking in Spring weather, it is made up in the plurality of UPC focused events and panels that are popping up.  One interesting event was the BIE Symposium 2023 hosted lasted week by De Brauw Blackstone Westbroek on questions surrounding the functioning of the UPC. Kat friends Tobias Cohen Jehoram and Emilia Zalewska were on hand to report on the proceedings for the Kat's readers. 

Over to Tobias and Emelia:   

"Last week De Brauw Blackstone Westbroek hosted the BIE symposium 2023 on the questions surrounding the functioning of the UPC, with Dutch UPC judges from both the Court of First Instance and the Court of Appeal present to discuss issues. The conference constituted the annual event organised by the renowned Dutch IP law journal ‘Berichten Industriële Eigendom’ (BIE) in cooperation with publisher deLex. It was perfect opportunity for patent litigators and attorneys to ask their burning questions to a panel comprising of appointed Dutch UPC judges and a member of the drafting committee of the Rules of Procedure (RoP).

After more than 80 attendees had taken their seats, moderator Prof. mr. C.J.J.C. van Nispen (chairman of the editorial board of BIE) and speakers Prof. William A. Hoyng (member of the drafting committee of the RoP) and Rian Kalden (member of Presidium and Presiding judge of the second panel of the Court of Appeal) opened the conference with a short update on the outstanding UPC matters such as the ongoing negotiations on Milan as the third location of the UPC's Central Division (it is unclear whether the matter will be finalised before entry into force on 1 June), the search for the three remaining judges for Central Division and Local Division in Denmark and completing a list of the reserve legal and technical judges (both hopefully to be finalised by 1 June).

After this, they discussed a set of various topics related to the RoP and the Agreement on the Unified Patent Court (UPCA). One of these concerned the conflict of interest matters specifically relating to the technical judges. Prof. Hoyng explained that work on the code of conduct for judges is still in progress. The draft code does not forbid technical judges to exercise a profession in parallel, as for example a patent attorney. However, in such cases, they are not permitted to act as representatives before the UPC. Another topic related to the way judges interpret the RoP, as these leave some room for the judges to apply their national interpretation norms. It has been emphasised that, even though some degree of diverging interpretation practices will most likely be inevitable, it is the task of the Presidium to encourage the development of joint ideas through for example judicial trainings. The subsequent discussion on the use of torpedo's, resulted in the suggestion that the 'carve out' of the jurisdiction of a Member State where national litigation is already pending, may provide a solution. Also the intricacies of the French saisie procedure were discussed. As the RoP include the "proportionality" requirement, it is unlikely that the practice of preservation of evidence will have the same form as in France.

After a break filled with lively conversations, the appointed Dutch UPC judges Prof. P.H. Blok (member of the Court of Appeal) and  drs. M.E. Kokke (member of the Court of First Instance) joined the speakers for the panel discussion. A number of questions were raised by the audience. The first question concerned the possibility of bringing Arrow declarations before the UPC, even if Arrow declarations are not explicitly foreseen in the UPCA. The panel agreed that this should also be possible before the UPC. Another question related to the interpretation of the requirement of being 'concerned by a patent' as laid down in article 47(6) UPCA. It was pointed out that there are differences in various jurisdictions regarding who has standing in patent actions and thus how this term should be interpreted. It remains to be seen how this question will be answered. The last point raised by the audience concerned FRAND. Judge Kalden informed the audience that this topic, and the specific aspects thereof, such as the requirement of "willingness", is yet to be discussed by the UPC judges. However, it seems that the UPC judges are open to determine FRAND royalties if such determination is sought and sufficiently substantiated.

All in all, the conference offered a stimulating opportunity to discuss a broad range of UPC-related topics with highly regarded speakers. While some questions remained unanswered, the dialogue between appointed Dutch UPC judges and patent professionals resulted in interesting discussions on a wide selection of relevant points. We are all eagerly anticipating the opening of the UPC on 1 June."