Bird & Bird submits proposal on the Rules of Procedure for the Unified Patent Court

01 October 2013

On 25 June the Unified Patent Court published draft Rules of Procedure for public consultation. Yesterday Bird & Bird submitted suggestions for improvements to the UPC's Preparatory Committee, having already contributed to submissions from NGOs such as Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) and European Patent Lawyers Association (EPLAW).

The introduction of a Unitary Patent and a Unified Patent Court is a historical development for Europe; it will represent the biggest change in the patent landscape since the European Patent Convention. Effectively, Europe is creating a new intellectual property right and a single court to enforce it. The new system is expected to come online by early 2015.  

As Bird & Bird covers the whole network of local, regional and central divisions of this new Court, the firm is able to provide clients with a thorough understanding of all its procedural and substantive law. The submission, co-authored by Bird & Bird partners Bruno Vandermeulen and Wouter Pors, is aimed at supporting and improving the quality of this new system, cutting through its complexities for the benefit of clients.  

View our full proposal here >

The main highlights of the Bird & Bird submission include the following:

Patent owners will have to decide whether they want to opt out their traditional European patents from the jurisdiction of the UPC. Bird & Bird has proposed a number of improvements to the opt-out/opt-in system to make this as smooth as possible.

Bird & Bird has also suggested simplifying the current language regime and proposed a number of improvements aimed at safeguarding the confidentiality of trade secrets and commercial information. 

Experts at Bird & Bird further indicated that there should be case management that ensures expedient litigation and coordination of cases that are related and suggested improvements on the coordination of simultaneous actions.

Wouter Pors, partner, Bird & Bird in The Hague said: “The introduction of the Unified Patent Court is probably the most significant change in patent law in Europe since the introduction of the European patent. Every patent owner and every company that is active in a field that includes patents will have to deal with this sooner or later. The system that has been created is very complicated and we feel we are well-positioned to address these complexities for the benefit of our clients." 

Morag Macdonald, Head of Bird & Bird's Intellectual Property Group added: "Bird & Bird plays an active role in setting those rules, both through our participation in NGO’s like AIPPI and EPLA and through direct contacts with the Court’s Preparatory Committee. As part of our continuing efforts to navigate our clients through complex legal environments, we submitted our suggestions for improvement to the envisaged Rules of Procedure. We remain focused on supporting and improving the quality of this new system.”

Looking at this issue in some more detail, proposals made by Bird & Bird include:

  • The first thing that patent owners will need to do is to decide whether they want to opt out their traditional European patents from the jurisdiction of the UPC. Bird & Bird has proposed a number of improvements to the opt-out/opt-in system of Rule 5 to make this as smooth as possible.

  • The language regime in the current rules is too complicated. Bird & Bird experts suggested that the plaintiff can choose from the languages designated by the division of his choice. This only requires deleting Rule 14.2

  • The rules for orders to produce or preserve evidence should contain checks and balances to safeguard the confidentiality of trade secrets and commercial information. Such information should only be disclosed to the applicant after a proper evaluation by the Court and these orders should only be granted if the applicant has carefully and sufficiently substantiated his claims. To achieve this, Bird & Bird has proposed a number of improvements to Rules 190 – 196.

  • Amicus curiae briefs, which are letters to the court expressing views on legal issues, will be an important tool for NGO’s and companies to assist the Court in the proper development of its case law. Bird & Bird fully supports EPLAW’s proposal for a new Rule 318 on this.

  • There should be case management that ensures expedient litigation and coordination of cases that are related. To that end, Bird & Bird suggested improvements to Rules 25 and 70 and a new Rule 340a on the coordination of simultaneous actions.