In anticipation of the creation of the Unified Patent Court and its bodies, an informal drafting committee of expert judges and lawyers set out to develop the Rules of Procedure for the court. The first draft was issued 29 May 2009 and was repeatedly revised. Many stakeholders submitted their views, both in writing and during informal consultation meetings. This resulted in the 14th draft being published on 31 January 2013. This draft is widely available. A first text book on the UPC by Callens/Granata is available from Kluwer Law International.
In recent months the drafting committee has been working on a new version. It was finalized on 31 May 2013 and also incorporates comments from inter alia Nokia, IPLA and EPLAW. This 15th draft has now been published by the Preparatory Committee on 25 June at www.unified-patent-court.org, which thereby is also the start of the public consultation that will run until 1 October 2013. The website will be the official source for information on the UPC. It also contains information on the Preparatory Committee and its Roadmap, Q & A's, etc.
Apart from minor technical corrections, the 15th draft of the Rules of Procedure contains a number of material changes, which are discussed in this news flash.
Bird & Bird will be preparing a submission to the Preparatory Committee, suggesting further improvements. This will in as far as possible be developed together with industry leaders. Further information on this will become available shortly.
A first seminar to discuss the Rules of Procedure will be held in The Hague on July 1st. This will be hosted by AIPPI, FICPI, the Netherlands Institute of Patent Attorneys and VNO-NCW, for registration see www.aippi.nl. Speakers will be Paul van Beukering (chair Preparatory Committee), Kevin Mooney (chair drafting committee), Peter Blok (patent judge in The Hague) and Wouter Pors (Bird & Bird & AIPPI Dutch National Group).
The UPC Agreement in article 83(3) provides for an opt-out regime for traditional European patents, which enables patent holders to block the jurisdiction of the UPC. An application can be filed during the transitional period of article 83 (initially 7 years) and will be effective for the life span of the patent. However, an application could only be filed with the Court Registry once the agreement comes into force and will only be effective once registered. This carries the risk that a large amount of such applications is filed at the starting date of the Court, which may create a backlog in registrations. That would enable third parties to file a central attack on a traditional European patent, thereby blocking the registration of the opt-out application.
This has now been solved in Rule 5.9. Filing applications to opt out will already be possible before the agreement comes into force. They will be processed by the European Patent Office, which will apparently create a preliminary register for this purpose. At the date of entry into force of the UPC Agreement, all opt-out applications will be transferred to the Court Registry. If all requirements have been fulfilled before that date, including payment of a fee, they will be effective as of the date of entry into force of the agreement.
As soon as the starting date for the preliminary register is known, patent owners should start making preparations for this.
The rules now also provide for an opt-out fee, and even for a fee to withdraw an opt-out, which may increase the costs of all granted traditional European patents and pending applications, if opt-out is felt to be necessary.
Rule 14.2 now provides that the statement of claim in proceedings before a local or a regional division which has designated two or more languages shall be drawn up in the language in which the defendant normally conducts its business in "its" member state. It is strange that the provision refers to "its" member state and not to "that" member state. Maybe this was only intended for the situation where the defendant is sued in a member state where he has his domicile or at least a place of business. However, it also seems to apply if jurisdiction is based on the place of infringement in accordance with article 33(1)(a) UPC Agreement.
This will then be the language of proceedings; any pleading lodged in another language shall be returned by the Registry.
However, in accordance with article 49(3), (4) and (6) of the UPC Agreement and Rules 321 and 322, the parties may also choose the language in which the patent was granted, if the panel also agrees.
In addition, after the statement of claim has been filed, under Rule 14.3 either party can request the President of the Court of First Instance to change the language of the remainder of the proceedings into the language in which the patent was granted in accordance with article 49(5) UPC Agreement. The President may then also decide that translations need to be submitted.
However, this would mean that if for instance the patent was granted in German and the defendant is based in Antwerp or at least does business in Antwerp in Dutch, the Brussels division may hear the case in German, with the approval of the President of the Court of First Instance, but not in English. Besides, how do you establish in which language a defendant usually does its business in a country where he does not have an establishment? Is a letter in Dutch sent by a Swedish company to a client in Antwerp containing an offer for sale sufficient? In that case, if the patent is in German, does that mean that the Brussels local division is blocked from doing the litigation in English? Does this mean that for instance Exxon Mobile is not entitled to defend itself in English in relation to an alleged infringement in its Antwerp refinery, if the patent is in German or French, even though Belgium also chose English as an official language for its Brussels local division? It thus seems that Rule 14 requires some further work.
Under Rule 21, a decision to reject a preliminary objection, for instance with regard to jurisdiction, may only be appealed with leave from the court, whereas a decision to allow such objection may always be appealed. Although this may be just a minor issue, it makes forum shopping even more easy. If such an appeal is lodged, the judge-rapporteur or the Court of Appeal may stay the proceedings in first instance. However, in view of Rule 220.2, 224(1)b and (2)b, 235(2) and 238(2) such appeals might also be handled in such an expeditious way that a stay is not needed, or at least will only cause a minor delay.
Action by licensee
Under the UPC Agreement, exclusive licensees can normally start infringement actions and non-exclusive license agreements may provide this option. If the defendant brings a counterclaim for invalidity, this of course requires the patent owner to participate. Such counterclaim is served on the patent owner by the Registry. Rule 25.3 now provides that the patent owner thereby becomes a party to the proceedings, regardless of whether he appears in court. This means that patent owners cannot prevent being dragged into such proceedings, except if they deny their licensees the right to enforce the patent in the license agreement. The European Commission has already notified the Preparatory Committee that the Rules of Procedure do not sufficiently protect the position of defaulting defendants as protected under the Brussels Regulation, but the position of such a defaulting patent owner also requires further attention.
Declaration of non-infringement
The Rules no longer provide for a counterclaim for infringement in an action for a declaration of non-infringement in the central division (though the headings of Rule 67 still suggest differently). The reason is probably that article 33(4) UPC Agreement does not provide for such a counterclaim. Thus, in that case the claim for infringement must be brought as an independent claim, which will normally not be before the central division.
The decision whether or not to bifurcate is normally taken after closure of the written procedure. However, that may not be practical, especially if both parties are of the same view. Therefore, Rule 37.2 now provides that the panel may take this decision at an earlier stage, so the parties will have more certainty about the further procedure. This is a very interesting change, since it seems to indicate that the parties may influence a division’s policy. Of course, any division is part of a single court that offers both options - bifurcation or not - as equals. So, if the parties agree to choose either of these available options, which the panel should by definition view as an appropriate option under the agreement, the panel should probably respect this choice.
If a revocation action is pending before the Central Division and subsequently an infringement action is brought before a local or regional division, the procedure in the Central Division shall be stayed, but under the new Rule 70.4 that stay is lifted if no counterclaim for revocation is filed in the infringement action. Of course, in that case there may still be timing issues between the revocation and infringement actions. These are not dealt with.
Rule 150.1 now provides that the cost order shall cover costs incurred by the court in the proceedings, such as for simultaneous translations, experiments and letters rogatory. Apparently the intention is that these costs will not be covered by the court fees. This of course deserves close monitoring, to prevent double dipping by the court.
Ex parte provisional measures
The applicant has a new duty of disclosure under Rule 206.4, which provides that the applicant shall be under a duty to disclose any material fact known to it which might influence the Court in deciding whether to make an order without hearing the defendant including any pending proceedings and/or any unsuccessful attempt in the past to obtain provisional measures in respect of the patent or patents.
Under Rule 262 all information relating to a procedure is in principle public, though the court may issue an order to keep certain information confidential . Various sections have been introduced to guarantee the confidentiality of ex parte applications and protective letters, which shall not be entered on the register or be publicly available until they can be disclosed. This implies that there will be some confidential shadow register for these documents.
In addition, Rule 262.5 now provides that information shall be confidential pending a decision by the court on a request for a confidentiality order.
Service on defendant
Rule 271.2(c) introduces a new phenomenon. An action for revocation of a patent or for a declaration of non-infringement may also be served electronically or physically on the representative as meant in Article 134 EPC who filed the application for unitary effect. This creates a new duty of care for those representatives. Electronic service cannot be refused. Service by registered letter is effective, even if the representative has refused the letter. This means that the representative cannot refuse service and is responsible for informing his client of the action. If the patent owner does not appear in court, a default decision may be granted, which under Rule 276.2 can also effectively be served on the representative for execution purposes.
Rules 287 and 288 are new. They introduce attorney-client privilege and legal privilege, not only for the lawyers and patent attorneys who do the litigation before the UPC, which was already guaranteed by article 48 UPC Agreement, but also for in-house lawyers and patent attorneys (both in-house and independent) who advise a party on patent matters. This rule therefore deviates from the CJEU ruling on in-house lawyers in its judgment of 14-9-2010, C-550/07 (Akzo Nobel).
The privilege in the Rules of Procedure has a broader scope than provided by article 48 UPC Agreement. It remains to be seen whether the Rules of Procedure are a sufficient basis for recognition of this privilege in foreign proceedings (for instance in the US).
The Preparatory Committee and the Drafting Committee have presented a comprehensive set of Rules of Procedure, which will certainly help to provide legal certainty in the new system. Many of the issues raised by industry and other stakeholders have now been resolved. Nevertheless, there still is room for improvement. The public consultation, which will run until the end of September, provides an excellent opportunity for this. The aim then is to finalize the draft by the end of this year, but even then there still is quite a lot of time until the system goes live early 2015. A balanced and thorough set of rules may be an important success factor for the Unified Patent Court.