Comment on draft Unitary Patent Court Rules

15 July 2013

It is unclear why some rules repeat the provisions of the Regulations. This can create ambiguity where the wording is not exactly the same. The Regulation supersedes the rules, so there is no need to repeat it. Rule 1 covers this sufficiently.

The Rules should include a provision to guarantee the confidentiality of trade secrets. For instance, the terms and conditions of license agreements should not be publicly available. Currently the Rules do not meet the requirements of article 39 TRIPs Agreement.

Rule 7

Rule 7(3) is unnecessarily restrictive and limits the freedom of the patent without due cause. It should only state that a withdrawal does not affect declarations of use that have been registered prior to the withdrawal. If at least one such declaration has been registered, the reduction of the fees should not be affected by the withdrawal.

Rule 8

Rule 8 is wrong in that it is an infringement on the patentee’s property right. It is not for the EPO to decide what the terms and conditions of FRAND licences under article 8 Unitary Patent Regulation should be; that should be for the parties to determine. At best, Rule 8(3) could provide that this is the default provision if the parties do not agree otherwise, like for instance on a fully paid up license. Parties should be allowed to keep the terms and conditions of their license agreement confidential. Rule 8 should provide that the copy of the statement shall be entered into the register by the EPO. However, the use as declared in the statement shall be kept confidential; there is no reason why companies who want to use a patented invention should make their technology publicly available. This would be information that could distort competition and affect the value of a company, especially of listed companies.

Rule 10

Patentees should be free to decide whether they want to surrender their patents partially or in their entirety; there is no reason why a partial surrender should not be allowed. Partial surrenders are often used as an alternative to amendment of claims in case of invalidity issues or invalidity proceedings. Not allowing them may create an unnecessary burden for the Unified Patent Court. In view of the current wording of article 3 Unitary Patent Regulation, the only thing the patentee should not be allowed to do is partially surrender his patent for a limited number of participating member states. In view of the explanatory remarks, this seems to have been the select committee’s intention, but that does not follow from the rule itself.

Rule 13

Rule 13(g) seems to impose an obligation to register commitments taken in international standardisation bodies. However, there is no legal basis for such an obligation. Whether such

undertakings are published s governed by the rules of such standardisation bodies, to which the patentee will have submitted himself if he wants to register his patent as a standards essential patent. The EPO has no authority to impose additional obligations. Rule 13 should clearly distinguish between facts for which there is an obligation to include them in the register, or which the EPO itself can include, and facts that the patentee may have included voluntarily.



Wouter Pors


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