The Unitary patent and Unified Patent Court · 6/9/2016 · The Unitary patent and Unified Patent Court State of play in June 2016 Sabine Agé MIP international Women Leadership

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9 June 2016

Paris Lyon

The Unitary patent and Unified Patent Court State of play in June 2016

Sabine Agé

MIP international Women Leadership Forum, New York • 9 June 2016

The Unitary Patent and

Unified Patent Court

What happened in 2015 and 2016?

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1. Legal sources

2. Spanish challenge

3. Brussels regulation

4. UPCA ratifications

5. UPC divisions to be created

6. Provisional application of UPCA

7. Rules of procedure

8. UPC Costs

9. UPC IT system

10. Judges’ selection

11. Representation before UPC

12. Unitary patent ready to go

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9 June 2016



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1. Legal sources

17 December 2012 Regulation 1257/2012 enhanced

cooperation creation of unitary patent protection

17 December 2012 Regulation 1260/2012 (translation arrangements)

19 February 2013 Agreement on a Unified Patent

Court and draft Statute

19 October 2015 Draft Rules of procedure

Unified Patent Court (V18)

http://www.upc.documents.eu.com/PDFs/

2014-10-31_Agreement_UPC _DE-EN-

FR_and_Rules_Procedure_UPC_DE-EN-

FR_Draft_17_and_Trier_hearing.pdf



2. Spanish challenge rejected on 5 May 2015

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Action C-146/13 in respect of Regulation (EU) No 1257/2012 (enhanced cooperation)

Action C-147/13 in respect of Regulation (EU) No 1260/2012 (translation arrangements)

Immediately thereafter Italy decided to join the Unitary Patent

http://www.upc.documents.eu.com/PDFs/2014-10-31_Agreement_UPC_DE-EN-FR_and_Rules_Procedure_UPC_DE-EN-FR_Draft_17_and_Trier_hearing.pdf















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9 June 2016



3. Regulation No 542/2014 amending Regulation Brussels I

Regulation (EU) No 542/2014 of the European Parliament and of the Council of

15 May 2014 amending Regulation (EU)

No 1215/2012 as regards the rules to be applied with respect to the Unified Patent

Court and the Benelux Court of Justice

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Purposes of Regulation No 542/2014

Allow entry into force of the UPC Agreement

Ensure compatibility of Regulation No 1215/2012 with the courts common to several Member States

Create long arm jurisdiction for certain acts of infringement of a EP-non EU patent e.g. Turkey, Switzerland

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http://www.veron.com/publications/Publications/Ex tent_of_Long-

Arm_Jurisdiction_Conferred_upon_the_UPC_P_Veron_2015_37_E IPR_p588.pdf

http://www.veron.com/publications/Publications/Extent_of_Long-Arm_Jurisdiction_Conferred_upon_the_UPC_P_Veron_2015_37_EIPR_p588.pdf



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9 June 2016



4. Ratifications UPC Agreement

Entering into force when 13 contracting States including FR, UK and DE have ratified

9 ratifications so far:

AU, FR, SE, BE, DK, MT, LU, PT and FI

The UK Parliament approved on March 2016 the draft Unitary Patent – Statutory

Instrument that will implement the Unitary Patent and Unified Patent Court in UK law

(subject to “brexit”) http://www.publications.parliament.uk/pa/cm201516/cmgeneral/deleg4/160301/160301s01.pdf

Draft bills published on 16 February 2016 in Germany for ratification of the Unified

Patent Court Agreement and implementation of Unitary patent system into German law

https://www.bmjv.de/SharedDocs/Gesetzgebungsverfahren/Dokumente/RefE_Uebereinkommen_EinheitlichesPatentgericht.pdf?__blob=publicationFile&v=2 https://www.bmjv.de/SharedDocs/Gesetzgebungsverfahren/Dokumente/RefE_Begleitgesetz_EuropaeischePatentreform.pdf?__blob=publicationFile&v=3 7



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5. The Court of first instance: central, local and regional divisions (based on the intentions to create divisions as supposed in June 2016)

© Véron & Associés

Central Division also competent as "local" for:AT, IE, LU, MT, PT

Baltic Regional Division (SE, EE, LT, LV)

Finland

Denmark

United Kingdom

The Netherlands

Germany (4 divisions)

Belgium

France

CZ-SK Regional Division ?(CZ, SK)

Central Regional Division ? (HU, SI, HR)

Poland (UP - non UPC)

Spain (non UP - non UPC)

Croatia (EU post UP & UPC)

http://www.publications.parliament.uk/pa/cm201516/cmgeneral/deleg4/160301/160301s01.pdf

https://www.bmjv.de/SharedDocs/Gesetzgebungsverfahren/Dokumente/RefE_Uebereinkommen_EinheitlichesPatentgericht.pdf?__blob=publicationFile&v=2




https://www.bmjv.de/SharedDocs/Gesetzgebungsverfahren/Dokumente/RefE_Begleitgesetz_EuropaeischePatentreform.pdf?__blob=publicationFile&v=3





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9 June 2016



6. Protocol for the provisional application of the UPCA signed on 1st October 2015

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“This protocol will allow some parts of the UPC Agreement to be applied early. This includes 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-out demands.”

Shall enter into force the day after 13 Signatory States of the UPCA including Germany, France and the United Kingdom, have either ratified, or informed the depositary that they have received parliamentary approval to ratify the UPCA



7. Rules of procedure: Berlin 25-26 June 2015

Joint meeting Legal Framework Working Group, Preparatory Committee + Drafting Committee about the 18th draft

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Johannes Karcher coordinator of the

Legal Framework Working Group

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9 June 2016



Draft 18 (19 October 2015)

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Proprietorship and registration for opt out (Rule 5)

and for proceedings (Rule 8)

Language of the proceedings when Contracting

Member States “designate one or more of the official

languages of the European Patent Office as the

language of proceedings of their local or regional

division” (Rule 14)



Proprietorship for proceedings

Rule 8 - Party and party’s representative

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5. Subject to paragraph 6, for the purposes of proceedings under these Rules:

(a) in relation to the proprietor of a European patent, the person entitled to be registered as proprietor under the law of each Contracting Member State in which such European patent has been validated shall be treated as the proprietor whether or not such person is in fact recorded in the register of patents maintained in such Contracting Member State (hereinafter “national patent register”); and

(b) in relation to the applicant for a European patent, the person entitled to be registered as applicant whether or not such person is in fact recorded as such in the European Patent Register kept by the European Patent Office.

(c) For the purposes of paragraph 5, there shall be a rebuttable presumption that the person shown in each national patent register and the European Patent Register kept by the European Patent Office is the person entitled to be registered as proprietor or applicant as the case may be.

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9 June 2016



Proprietorship for proceedings

Rule 5 – Opt out

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1. The proprietor of a European patent (including a European patent that has

expired) or the applicant for a published application for a European patent

(hereinafter in this Rule 5 an “application”) who wishes to opt out that patent or

application from the exc lusive competence of the C ourt in accordance with A rticle

83(3) of the A greement shall lodge an A pplication (hereinafter in this Rule 5 an

“A pplication to opt out”) with the Regis try.

(a) Where the patent or application is owned by two or more proprietors or

applicants, all proprietors or applicants shall lodge the A pplication to opt out. Where

the person lodging an Application to opt out is not recorded as the

proprietor or applicant in the registers referred to in Rule 8.5(a) and (b),

respectively, the person shall lodge a declaration pursuant to paragraph

3(e).*

(b) The A pplication to opt out shall be made in respec t of all of the C ontracting

Member States for which the European patent has been granted or which have been

des ignated in the application.

* “a Dec laration of proprietorship that the person lodging the A pplication to opt

out is the proprietor or applicant pursuant to Rule 8 .5 and entitled to lodge the

A pplication to opt out.”



Rule 14 – Use of languages

under Article 49(1) and (2) of the Agreement

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(c) Where a designation of a language under Article 49(2) of the Agreement for a regional division or for one or more local

division(s) hosted in a Member State so indicates, the judge-rapporteur may order in the interest of the panel to provide

that judges may use in the oral proceedings the language according to paragraph 1(a) and/or to provide that the Court may make any order and deliver any decision in the language

according to paragraph 1(a) together with a certified translation for the purpose of Rule 118.8 into the language according to

paragraph 1(b).

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9 June 2016



8. Court fees and recoverable costs

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On 25 February 2016 the Preparatory Committee

agreed the Rules on Court fees and recoverable costs

for the UPC (subject to legal scrubbing)

The document Rules on Court fees and recoverable

costs comprises an amendment of Rule 370, a table of

fees, a scale of ceilings for recoverable costs and an

Explanatory Note https://www.unified-patent-

court.org/sites/default/files/agreed_and_final_r370_subject_to_legal_scrubbing_to_secreta riat.pd f



Fixed fees

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Procedures/actions Fixed fee

Infringement action [R. 15] 11.000 €

Counterclaim for infringement [R. 53] 11.000 €

Action for declaration of non-infringement [R. 68] 11.000 €

Action for compensation for license of right [R. 80.3] 11.000 €

Application to determine damages [R. 132] 3.000 €

I. Fixed fees (Court of First Instance)

https://www.unified-patent-court.org/sites/default/files/agreed_and_final_r370_subject_to_legal_scrubbing_to_secretariat.pdf





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9 June 2016



Fixed fees (ctd)

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Procedures/actions Fixed fee

Revocation action [R. 47] 20.000 €

Counterclaim for revocation [R. 26]

same fee as the infringement action

subject to a fee limit of 20.000 €

Application for provisional measures [R. 206.5] 11.000 €

Action against a decision of the European Patent Office [R. 88.3, 97.2]

1.000 €

Application to preserve evidence [R. 192.5] 350 €

Application for an order for inspection [R. 199.2] 350 €

Application for an order to freeze assets [R. 200.2] 1.000 €

Filing a protective letter [R. 207.3] 200 €

Application to prolong the period of a protective letter kept on the register [R. 207.8]

100 €

Application to review a case management order [R. 333.3]

300 €

Application to set aside decision by default [R. 356.2] 1.000 €

III. Other procedures and actions (Court of First Instance)



Appeals/applications Fixed fee

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to an application for provisional measures [R. 206.5] 11.000 €

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to an infringement action [R. 15] 11.000 € + additional value-based fee according to table II

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to a counterclaim for infringement [R. 53] 11.000 € + additional value-based fee according to table II

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to a revocation action [R. 47] 20.000 €

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to a counterclaim for revocation [R. 26] fee paid in the first instance

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to an action for declaration of non-infringement [R. 68] 11.000 € + additional value-based fee according to table II

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to an action for compensation for license of right [R. 80.3] 11.000 € + additional value-based fee according to table II

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to an application to determine damages [R. 132] [3.000 € + additional value-based fee according to table II]

Application for rehearing [R. 250] 2.500 €

Appeal pursuant to Rule 220.1 (a) and (b) [R 228] as to an action against a decision of the European Patent Office [R. 88.3, 97.2]

1.000 €

Interlocutory appeals [R. 220.1(c.), 228] 3.000 €

Application for leave to appeal against cost decisions [R. 221, 228] 1.500 €

Request for discretionary review [R. 220.3, 228] 350 €

Application for re-establishment of rights [R. 320.2] 350 €

Application to review a case management order [R. 333.3] 300 €

Application to set aside decision by default [R. 356.2] 1.000 €

IV. Court of Appeal

Fixed fees (ctd)

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9 June 2016



Value based fees

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“6 . The assessment of the

value of the relevant

action (Rule 370.3) shall

reflect the objective

interes t pursued by the

filing party at the time of

filing the action. In

deciding on the value, the

Court shall in particular

take into account the

guidelines laid down in the

decis ion of the

Adminis trative Committee

for this purpose.”

“Guidelines for the

determination of Court

fees and the ceiling of

recoverable cos ts” have

been agreed by the

P reparatory C ommittee

Value of action Additional value-based fee

Up to and including 500.000 € 0 €

Up to and including 750.000 € 2.500 €

Up to and including 1.000.000 € 4.000 €
















more than 50.000.000 € 325.000 €



What’s next?

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2016: Administrative Committee’s final approval

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9 June 2016



9. IT System

Unified Patent Court Case Management System is on its way https://secure.unified-patent-court.org/login

User workshops in Stockholm, Luxembourg,

Dusseldorf, Munich and Rome between October and December, Paris in January 2016

Case Management System mailing list http://unified-patent-court .us9.list-manage.com/subscribe?u=ce522772fa2293932d95a6e0f&id=a1f94756ea

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10. The judges: appointment

“(1) The Advisory Committee* shall establish a list of

the most suitable candidates to be appointed as judges of

the Court, in accordance with the Statute.

(2) On the basis of this list, the Administrative Committee

shall appoint the judges of the Court acting by common

accord.

(3) The implementing provisions for the appointment are

set out in the Statute.”

* 14 (2) The Advisory Committee shall comprise patent judges and

practitioners in patent law and patent litigation with the highes t recognised

competence. P res ident: Lord Robin Jacob

https://secure.unified-patent-court.org/login






http://unified-patent-court.us9.list-manage.com/subscribe?u=ce522772fa2293932d95a6e0f&id=a1f94756ea








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9 June 2016



Judges’ selection

Call for expression of interest by the Preparatory

Committee fall 2013

1300 candidates

At its 6th meeting (8 July 2014) a list of suitable

candidates was approved by the Preparatory

Committee

Legally qualified judges

170 eligible

184 eligible with training

Technically qualified judges

341 eligible

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Training Center

Training Centre for the Unified Patent Court (UPC) was officially opened on the 13 March 2014 in Budapest

Training sessions organized in 2015 for the legal judges eligible with training (in Budapest) and for the technical judges (at Ceipi)

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9 June 2016



UPC judicial recruitment

The recruitment of legally qualified and of technically

qualified judges of the Unified Patent Court (Court of

First Instance and Court of Appeal) has been launched

in May 2016 with the publication of the vacancy

notices

The deadline for applications is 4 July 2016.

The finalization of the appointment procedure is

dependent on the entry into force of the Protocol on

Provisional Application and subsequently of the

Agreement on the Unified Patent Court

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11. Representation

On 13 June 2014 the Preparatory Committee launched a public consultation (closed on 31 July 2014)

At its meeting of 3 September 2015, it

approved the following draft European Patent Litigation Certificate and Explanatory Memorandum: www.unified-patent-court.org/images/documents/Draft -EPLC-2015-07-01-final-clear.pdf

www.unified-patent-court.org/images/documents/Ex planatory -memorandum-EPLC-2015-07-01-final-clear.pdf

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http://www.unified-patent-court.org/images/documents/Draft-EPLC-2015-07-01-final-clear.pdf

















http://www.unified-patent-court.org/images/documents/Explanatory-memorandum-EPLC-2015-07-01-final-clear.pdf



















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9 June 2016



Representation

17 May 2016: Proposal for a Code of Conduct for the UPC

(3rd draft) has been submitted by EPLAW, EPLIT and epi to

the Preparatory Committee

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1. Relationship with the

Court

2. Fair conduct of

proceedings

3. Contact with Judges of

the Court

4. Demeanour in Court

5. False or misleading

information

6. Privileged information

7. Dealing with witnesses

and party experts

8. Change of

representation



12. Unitary patent ready to go

On 15 December 2015, the Select Committee which represents the EU member states participating in the new Unitary Patent, has formalized a series of agreements comprising:

the implementing rules

budgetary and financial rules

the level of the renewal fees

the rules concerning the distribution of the renewal fees between the EPO and the participating member states

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9 June 2016

1, rue Volney

75002 Paris Tel. +33 (0)1 47 03 62 62

Fax +33 (0)1 47 03 62 69

3, cours Charlemagne

F 69002 Lyon Tel. +33 (0)4 72 69 39 39

Fax +33 (0)4 72 69 39 49

[email protected] www.veron.com

Thank you

Sabine Agé

mailto:[email protected]

http://www.veron.com/

Documents

The Unitary patent and Unified Patent Court · 6/9/2016 · The Unitary patent and Unified Patent Court State of play in June 2016 Sabine Agé MIP international Women Leadership