March 11, 2016
By Leythem A. Wall; Anthony C. Tridico, Ph.D.
Authored by Leythem A. Wall and Anthony C. Tridico, Ph.D.
It all came together for the Unified Patent Court (UPC) in 2015, including endorsement of Unitary Patent renewal fees and adoption of the Court’s Rules of Procedure. In this follow up to last year’s UPC update,1 we review what milestones have been reached over the past 12 months and what remains to be done in 2016 before the new system is up and running.
The Select Committee of the Administrative Council of the European Patent Office met on June 24, 2015, and endorsed the True Top 4 proposal for Unitary Patent renewal fees.2 As such, the annual maintenance fee for a Unitary Patent will be equivalent to the sum of four national renewal fees (UK, France, Germany and Netherlands). Italy joined the Unitary Patent on Sept. 30, 2015, becoming the 26th member of the enhanced cooperation regime.3 The Draft Rules relating to Unitary Patent Protection and relating to fees for Unitary Patent Protection were adopted on Dec. 15, 2015.4
In November 2014, the Advocate General of the Court of Justice recommended that Spain’s challenges to the Unitary Patent package be dismissed.5 The Court of this Justice of the European Union subsequently confirmed this in their decisions of May 5, 2015.6
A number of UPC locations have already been confirmed, including the Munich Central Division, Germany’s Local Divisions and London’s Central and Local Division.7 The Court of Appeal in Luxembourg has been selected and the Nordic-Baltic Regional Division will be hosted in Sweden.8
At the Preparatory Committee’s meeting of Oct. 19, 2015, the 18th draft of the UPC Rules of Procedure was adopted.9 All that remains is to incorporate the Court fees confirmed at the Preparatory Committee meeting of Feb. 24-25, 2016. The Preparatory Committee also agreed to the mediation rules during their last meeting of 2015.10
Following a public consultation on Court fees11 in May 2015, the fees were confirmed at the Preparatory Committee meeting of Feb. 25, 2016.12 Guidelines for determination of Court fees and the ceiling of recoverable costs have also been issued.13 Most notably the originally proposed opt out fee of 80 EUR per patent opt out has been removed. There is a fixed fee of 20,000 EUR for a revocation action. Infringement actions have a fixed fee of 11,000 EUR and a value added fee which could rise to as high as 325,000 EUR if the action value is assessed at more than 50 million EUR. A 40 percent discount is available to small and micro entities. There are also partial fee reimbursements available depending on when an action is withdrawn or settled. Recoverable costs are capped based on value of the case.
Over 1,000 candidates had expressed interest in becoming judges of the UPC.14 About one third of the applicants expressed interest in a position as a legally qualified judge, with the remaining applying to be technically qualified judges. Among the legally qualified judges, 170 were deemed eligible and 180 deemed eligible with training. A large number of the technically qualified judges were deemed eligible without need for training.15 CEIPI training for the technically qualified judges began in September 2015.16 The level of net salaries for full-time judges of the UPC has been agreed at 11 and 12 thousand euros per month, for the Court of First Instance and Court of Appeal respectively.17
Article 48 of the UPC Agreement governs who can act as a representative before the UPC. Section 2 specifically states that European patent attorneys with an appropriate qualification such as a "European Patent Litigation Certificate" (EPLC). The draft rules for the EPLC and other qualifications were adopted by the Preparatory Committee at their meeting on Sept. 3, 2015.18,19 The vast majority of British European patent attorneys will have full representation rights before the UPC.
The Preparatory Committee confirmed in July 2015 that the IT work contracts for the UPC had been awarded to T-Systems for the hosting work, Miggle for development of the website and Net Services Spa for the case management development.20 Numerous IT workshops took place in 2015 across Europe to see how the Case Management system would work and to procure feedback from potential users.21
On Oct. 1, 2015, a number of Member States signed an agreement directed to the provisional application of the UPC Agreement.22 The protocol will allow some parts of the UPC Agreement to be applied early including final decisions on the practical set up of the Court, for example, the recruitment of judges and testing of IT systems. The provisional application phase will also be used to allow for early registration of opt-outs demands.23 The Protocol only comes into force when 13 states including UK, Germany and France have at least internally ratified the UPC Agreement and signed the Protocol. At present, 10 states including UK, France and Germany have signed the Protocol Agreement.24
Article 89 of the UPC Agreement states:
1. This Agreement shall enter into force on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States [France, Germany, UK], in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 concerning its relationship with this Agreement, whichever is the latest.
Thus far Austria, Belgium, Finland, France, Denmark, Luxembourg, Malta, Portugal and Sweden have ratified.25 Accordingly, only four more ratifications (including UK and Germany) are required for the UPC to be up and running.
Despite the impending EU referendum26 (the outcome of which does not affect the UPC going ahead or representation rights of British European patent attorneys), the UK remains on track to ratify this year having completed its consultation on legislation to give effect to the UPC Agreement and EU legislation on the Unitary patent. The legislation will make certain changes to the UK Patents Act, and will come into force when the UPC Agreement comes into force.27 At the beginning of March 2016, the UK House of Commons and House of Lords approved the draft legislation.28
Germany is also on course to ratify with the German Federal Ministry of Justice and Consumer Protection (BMJV) having recently published the first draft of legislation that will make it possible for Germany to ratify the Unified Patent Court Agreement.29 This was published, together with a second draft bill to implement the Unitary patent system into German law.30
A number of other states look to have made significant developments towards ratification, particularly the Baltic states who have agreed to participate in a Regional Division with Sweden.31 The Netherlands have also recently proposed draft legislation in order to ratify the UPC Agreement.32
As we can see there has been a lot of progress over the past twelve months. Based on the Preparatory Committee latest predictions, we can expect their work will be complete by mid-2016 and the Court operational at the start of 2017.33
Let the countdown begin.
1 BNA’s Patent, Trademark & Copyright Journal: 2015—The Year It All Comes Together for the Unified Patent Court (89 PTCJ 994, 2/13/15).
2 Business-friendly fee pattern adopted for the unitary patent, at https://www.epo.org/news-issues/news/2015/20150624.html.
3 Italy joins the unitary patent, at http://ec.europa.eu/growth/tools-databases/newsroom/cf/itemdetail.cfm?item_id=8481.
4 Decision of the Select Committee of the Administrative Council of 15 December 2015 adopting the Rules relating to Unitary Patent Protection, at http://documents.epo.org/projects/babylon/eponet.nsf/0/0F967C9C422EF4D1C1257F230059D1C0/$File/edsc1501.pdf and http://documents.epo.org/projects/babylon/eponet.nsf/0/EC5538ECBE1154E6C1257F23005A0F4F/$File/edsc1502.pdf.
5 Advocate General’s Opinion in Spain v Parliament and Council, at https://www.unified-patent-court.org/news/advocate-generals-opinion-spain-v-parliament-and-council.
6 Judgments of the Court (Grand Chamber), at http://src.bna.com/c8w; and http://src.bna.com/c8s.
7 UPC London Location, at https://www.gov.uk/government/news/upc-london-location.
8 UPC locations, at https://www.unified-patent-court.org/locations.
9 Preliminary set of provisions for the Rules of Procedure ("Rules") of the Unified Patent Court, at https://www.unified-patent-court.org/sites/default/files/UPC-Rules-of-Procedure.pdf.
10 Mediation Rules, at https://www.unified-patent-court.org/sites/default/files/upc_mediation_rules.pdf.
11 Preparatory Committee for the Unified Patent Court, Consultation Document, Rules on Court fees and recoverable costs, at https://www.unified-patent-court.org/sites/default/files/UPC_Court_Fees_and_Recoverable_Costs_Consultation_Document_FINAL.pdf.
12 Preparatory Committee for the Unified Patent Court, Rules on Court fees and recoverable costs, at https://www.unified-patent-court.org/sites/default/files/agreed_and_final_r370_subject_to_legal_scrubbing_to_secretariat.pdf.
13 Guidelines for the determination of Court fees and the ceiling of recoverable costs of the successful party, at https://www.unified-patent-court.org/sites/default/files/guidelines_for_court_fees_and_recoverable_costs.pdf.
14 Expression of Interests of Candidate Judges: letters issued, at https://www.unified-patent-court.org/news/expression-interests-candidate-judges-letters-issued.
15 The Unified Patent Court: State of play of implementation work, at https://www.epo.org/law-practice/legal-texts/official-journal/2015/etc/se5/p42.html.
16 Centre d’Etudes Internationales de la Proprie´te´ Intellectuelle, Training Program for Technically Qualified Judges of the Unified Patent Court, at http://www.ceipi.edu/index.php?id=14370&L=2.
17 Report of the 14th Preparatory Committee Meeting, at https://www.unified-patent-court.org/news/report-14thpreparatory-committee-meeting.
18 Decision of the Administrative Committee: Rules on the European Patent Litigation Certificate and Other Appropriate Qualifications Pursuant to Article 48(2) of the Agreement on a Unified Patent Court, at https://www.unified-patent-court.org/sites/default/files/Draft-EPLC-2015-07-01-final-clear-10-9-15.pdf.
19 Explanatory Memorandum on the Draft Proposal for Rules on the European Patent Litigation Certificate and Other Appropriate Qualifications, at https://www.unified-patentcourt.org/sites/default/files/Explanatory-memorandum-EPLC-2015-07-01-final-clear.pdf.
20 10th meeting of the Preparatory Committee—10 July 2015, at https://www.unified-patent-court.org/news/10thmeeting-preparatory-committee-10-july-2015.
21 UPC Case Management System, Beta Test Site, at https://secure.unified-patent-court.org/login.
22 Protocol to the Agreement on a Unified Patent Court on provisional application, at https://www.unified-patentcourt.org/sites/default/files/Protocol_to_the_Agreement_on_Unified_Patent_Court_on_provisional_application.pdf.
23 Protocol to the UPC Agreement, at https://www.unifiedpatent-court.org/news/protocol-upc-agreement.
24 Agreement on a Unified Patent Court, at http://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001.
25 Id.
26 PM statement following Cabinet meeting on EU settlement: 20 February 2016, at https://www.gov.uk/government/speeches/pms-statement-following-cabinet-meeting-on-eusettlement-20-february-2016.
27 Secondary Legislation Implementing the Unified Patent Court, at https://www.gov.uk/government/consultations/secondary-legislation-implementing-the-unified-patent-court.
28 House of Commons Official Report, Draft Patents (European Patent With Unitary Effect and Unified Patent Court) Order 2016, at http://www.publications.parliament.uk/pa/cm201516/cmgeneral/deleg4/160301/160301s01.pdf.
29 Referentenentwurf des Bundesministeriums der Justiz und für Verbraucherschutz: Entwurf eines Gesetzes zu dem Übereinkommen vom 19. Februar 2013 über ein Einheitliches Patentgericht, at https://www.bmjv.de/SharedDocs/Gesetzgebungsverfahren/Dokumente/RefE_Uebereinkommen_EinheitlichesPatentgericht.pdf?__blob=publicationFile&v=2.
30 Referentenentwurf des Bundesministeriums der Justiz und für Verbraucherschutz: Entwurf eines Gesetzes zur Anpassung patentrechtlicher Vorschriften auf Grund der europäischen Patentreform, at https://www.bmjv.de/SharedDocs/Gesetzgebungsverfahren/Dokumente/RefE_Begleitgesetz_EuropaeischePatentreform.pdf?_blob=publicationFile&v=3.
31 Institute of Professional Representatives before the European Patent Office: UPC Agreement Ratification Process and Local or Regional Divisions, at http://patentepi.com/assets/uploads/documents/news/151207_UPCA_ratification_process_and_local_regional_divisions.pdf.
32 Goedkeuring van de op 19 februari 2013 te Brussel tot stand gekomen Overeenkomst betreffende een eengemaakt octrooigerecht, at https://zoek.officielebekendmakingen.nl/kst-34411-2.html.
33 12th meeting of the Preparatory Committee—19 October 2015, at https://www.unified-patent-court.org/news/12thmeeting-preparatory-committee-19-october-2015.
Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, Vol. 91, No. 1366, March 11, 2016. Copyright © 2016 The Bureau of National Affairs, Inc. (800-372-1033) www.bna.com. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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