Institut der beim Europäischen Patentamt zugelassenen VertreterInstitute of Professional Representatives before the European Patent Office

Institut des mandataires agréés près l'Office européen des brevets

An overview of the UPC draft

based on presentation of based on presentation of Axel CASALONGAAxel CASALONGAChairmanChairman

Litigation CommitteeLitigation Committee

12th March 2014 European Patent Institute 1

Future EU patent system: Litigation system

•High quality Centralized Litigation Organization: •High quality•Harmonization

•Between regional / national courts•Between EPO and Courts

•National /regional level courts:•Access and support for SMEs by Attorneys at Law and EU patent attorneys in the countries

•Role EU Patent Attorneys important: •Experience and training to deal with patents•Link EPO with Court system

2

If we cannot get what we like, let us like what we can get

Spanish proverb12th March 2014 European Patent Institute2

Exclusive Juridiction

• Settlement of litigations related to

- EP patents

- Unitary patents

• Infringement, declaration of non infringement, Nullity, Provisional measures, Injunctions and damages

• Court common to the Contracting States

• Only Member states of the EU (excluding for example Switzerland)

12th March 2014 European Patent Institute 3

The Court

• Court of 1st Instance

- Local divisions (one or more in each country)

- Regional divisions- one Central division: Paris and London/Munich for specific technical fields (June 2012): London: Chemical / Pharmaceutical; Munich: Mechanical Engineering

• Court of Appeal

• Register

12th March 2014 European Patent Institute 4

The Court

COURT OF APPEAL

Central Division

LocalDivision

LocalDivision

RegionalDivision

RegionalDivision

12th March 2014 European Patent Institute 5

Judges of 1st instance divisions

• Multinational panels of 3 judges• Less experienced divisions:

- one local judge

- two judges from the pool of judges

• More experienced divisions:

- two local judges

- one judge from the pool of judges

- one additional technical judge from the pool of judges upon request of one party or initiative of the panel

• Central division:

- 2 legally qualified judges of different nationalities

- 1 technical judge

12th March 2014 European Patent Institute 6

Judges of the Court of Appeal

- 3 legally qualified judges of different nationalities

- 2 technical judges

12th March 2014 European Patent Institute 7

Infringement acts

• Direct use:

- making, offering, selling, using, importing or storing a patented product or using a patented process or offering, selling, using, importing or storing a product directly obtained by a patented process

• Indirect use: (contributory infringement)• Limitations:

- private or experimental uses

- farmer privilege

• Exceptions:

- prior use (national equivalence)

- limited to each country

12th March 2014 European Patent Institute 8

Where to sue for infringement

• Before the local division hosted in the country of the infringement

• Or before the local division where one of the defendants is domiciled

• If defendant is outside the Contracting States,- before the local division of the infringement- or before the Central division (new proposal)

• In case of same actions engaged before several divisions, the division first seized is competent for the whole case

• The parties may agree to bring the action before the Central division

12th March 2014 European Patent Institute 9

Nullity actions

• Direct actions- must be brought before the Central division

• Counter claim for nullity- may be handled by the local division (joining infringement and nullity) with an additional technical judge- or referred to the Central division (the local division may stay the infringement proceedings or not)- or the entire case is referred to the Central division if the parties agree

12th March 2014 European Patent Institute 10

Production of evidence of infringement

• Order for inspection (saisie-contrefaçon):

- may be issued ex parte

- may be subject to the provision of a security

- the inspection: by a person appointed by the Court / description / Taking of samples

• Order to produce evidence

- if reasonable evidence already available

• Communication of information (origin, quantities, etc…)

12th March 2014 European Patent Institute 11

Provisional measures

• Preliminary injunction may be granted

- with balance of interest of the parties

12th March 2014 European Patent Institute 12

Remedies

• Permanent injunction

• Damages (not punitive)

• Other corrective measures

- recall from products

- removal from commerce

- destruction

• Period of limitation: 5 years

12th March 2014 European Patent Institute 13

Representation

• Lawyers

• Or European Patent Attorneys with appropriate qualification or European Litigation Certificate

• May be assisted by a patent attorney

12th March 2014 European Patent Institute 14

Financing

• Member states hosting divisions of 1st Instance or Court of Appeal must provide facilities (premises, offices, IT equipment, support staff…)

• Court fees: - long term objective: self supporting Court

- low or intermediate level of fees: • Infringement: 6 000 €

• Revocation: 6 000 €

• Appeal: 9 000 €

- supplemental fee if the value of the dispute exceeds 1 Mi€

12th March 2014 European Patent Institute 15

Financing

• Contributions by the Member States on the basis of:

- number of EP patents

- or number of National litigations

- or annual fees distribution for Unitary patent

12th March 2014 European Patent Institute 16

Link between UPC and Unitary Patent

• Entry into force of the UPC when 9 countries have ratified

• The Unitary patent should enter into force simultaneously

• The Unitary patent has unitary effect only in countries where the UPC is in force (transitional period)

12th March 2014 European Patent Institute 17

Transitional arrangements

• EP patent owners may choose National courts or UPC

• Transitional period: 7 years

• Possible prolongation: further 7 years

12th March 2014 European Patent Institute 18

Language of procedure

1. Official language of the country hosting the local division

2. Or one of EPO languages chosen by the country hosting the division

3. Parties may agree to use the language of the granted patent if the panel approves

- if not, the case may be referred to the Central Division

4. On grounds of convenience and fairness:- language of the granted patent

- at request of one party

- or with agreement of both parties

12th March 2014 European Patent Institute 19

Status of discussions on UPC

• Representation by EPAs

• Comments on latest drafts for Rules of procedure

12th March 2014 European Patent Institute 20