In this earlier posting on the transitional scheme and opt-out options we explained that the future European patent system will provide two different routes for patent protection, (i.) the classical EP bundle patent and (ii.) the new European Patent with unitary effect but, in the long run, only one judicial system namely the Unified Patent Court as established by the Unified Patent Court Agreement (UPCA).
During an at least seven-years long transitional period, however, proprietors/applicants of EP patents/applications can opt-out from the UPC system and ensure responsibility of the present European post-grant system with infringement and invalidity suits before national courts separately for each single nationalised EP patent, this circumventing the unitary effect of UPC proceedings (Art 83 UPCA).
We also pointed to the fact that there is a certain risk for EP patent proprietors to get stuck with the new UPC system and its unitary effect if, e.g, an invalidity suit is filed by a competitor before the proprietor can file an opt-out request for his patent(s).
Before this background, the recently published 15th Draft of the Code of Procedure (mark up version) provides a new Rule 5 (8) RoP implementing a sunrise period giving EP proprietors/applicants the option to opt-out before the UPC Agreement actually enters into force, thus preventing third parties to file legal suits by which a patent gets stuck with the UPC system:
An Application to opt out may be lodged with the European Patent Office after a date to be announced by the European Patent Office and before the coming into effect of the Agreement. [...]
At the time being, the length of the sunrise period is unknown.
Also new in comparison to the 14th draft of the Rules of Procedure are Rules 5 (3) and (6) RoP requiring fees for opt-out and withdrawal of opt-out (cf. also Rule 370 (2) RoP). The amount to be payed is not yet known, however, there are speculations that it will lie in the range of 200 to 400 EUR, which may sum up to a considerable amount of money if large portfolios are involved.
In this earlier posting we speculated about the representation rights of national German and UK patent attorneys before the new Unified Patent Court, based on the wording of Art 48 UPCA and the somewhat odd formulation of Rule 286 of the 14th Draft of the Rules of Procedure:
[...] Lawyers within the meaning of Article 48(1) of the Agreement are also jurists authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation. [...].
We preliminarily concluded that the definition of the term “jurists” may extend the group of lawyers according to Art. 48 (1) UPCA by certain other legal professionals with a specific expertise, such as national patent attorneys that are allowed to represent their clients in national civil proceedings, e.g. German patent attorneys who are authorised to present invalidity cases before the German Federal Patent Court (BPatG) and the Federal Court of Justice (BGH).
Now the 15th Draft of the Code of Procedure (mark up version) has found the daylight – not on an official server of the Preparation Committee, but in a somewhat obscure way via the private US-based mailchimp service.
Besides other interesting amendments in comparison to the the 14th draft (see e.g. here), Rule 286 CoP has been amended by replacing the term “jurist” by the term “lawyer”. The new passage thus reads:
Lawyers within the meaning of Article 48(1) of the Agreement are also lawyers authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation.
What is the sense of this – mathematically speaking - recursive definition?
Article 48 (1) UPCA generally covers “lawyers authorised to practise before a court of a Contracting Member State”, i.e. all attorneys-at-law of the Contracting member states. We thus have two definitions, whereas the second defines is a genuine subset of the first:
- lawyers authorised to practise before a court of a Contracting Member State, and
- lawyers authorised to practice in patent related matters before a court in a Contracting Member State.
What is the sense in clarifying that a genuine subset of the group of entitled lawyers is entitled as well?
The most probable answer is that this recursive – and thus unclear – definition is nothing more than a drafting error caused by a quick-and-dirty approach to end speculations like the above ones about representation rights of some national patent attorneys. In the present form, Rule 286 (1) 15th Draft CoP might then just be useless and needs to be cancelled in the 16th draft.
On the other hand, one may also argue that the existence of Rule 286 (1) changes (downgrades) the scope of the term “lawyer” in Art 48 (1) UPCA to “person practicing law” or simply “legal counsel”, which would immediately render the two definitions meaningful again, as they would read
- legal counsels [generally] authorised to practise before a court of a Contracting Member State, and
- lawyers authorised to practice [only] in patent related matters before a court in a Contracting Member State.
The first definition would then cover attorneys-at-law and the second, again, such national patent attorneys that are authorised to represent certain patent cases before national civil courts. In this case, however, the amendmet would be useless as well as it does not change anything as compared to the 14th draft version.
Regardless of the way Rule 286 (1) may be interpreted in the present form or amended in future, it certainly is not an indication of the utmost care the Preparation Committee should pay to the Rules of Procedure as the backbone of the new court system.
In February this year the European trademark community took note of a leaked version of the European Commissions’s draft trademark legislation in reaction to the widely discussed Study on the Overall Functioning of the European Trademark System presented by the Max Planck Institute for Intellectual Property in February 2011 (pdf, 4.5 MB).
- draft amended Council Regulation No 207/2009 on the
CommuniyEuropean Trade Mark,
- draft amended Regulation (EC) No 2868/95 on the fees payable to the OHIM,
- proposal for a Directive to approximate the laws of the Member States relating to trademarks (Recast).
The leaked proposal is a pre-final text which gives extensive insight into the EU Commission’s plans to substantively refurbish the Community Trademark (CTM) system as we know it today.
The reasons why and by whom the legislative proposal was ‘leaked’ instead of being officially published on the EU servers lie in the dark, but it can be assumed that the political intentions outweigh the legal ones. As the drafts have been sent, inter alia, to the member organisations of the so called OAMI Users’ Group, a consortium of international NGO’s active in the IP sector and accredited to the OHIM, the leaker apparently intends to provoke a reaction of stakeholders, for instance to test the acceptance of the new legislation in a more conspirative way instead of risking open and public criticism.
The MARQUES association considers itself as a defender of trademark owner’s and system user’s interests. Compared to other member organisations of the OAMI Users’ Group, MARQUES appears to be more interested in a public discussion as it now again involved the public in a discussion that many other stakeholders consider a topic for closed expert circles only. The extensive comments (pdf, also here) published yesterday (20 March 2013) also include a detailled summary of the substance of the draft legislation.
By this open approach MARQUES refuses to become a silent accomplice of the leaker and his political interests and, even more important, reminds lawmakers that openness and public consultation are vital to a democratic community and the acceptance of its laws.
The new European patent system will provide two concurrent routes to patent protection on the continent, (i.) the classical EP bundle patent, “which does not benefit from unitary effect by virtue of EU Reg No 1257/2012” and thus has to be validated in each EPC member state where protection is sought and (ii.) the European Patent with unitary effect effective in all ‘contracting member states’ that have signed and ratified the Unified Patent Court Agreement (UPCA) at the time of grant.
While Unitary Patents are mandatorily subject to proceedings and lawsuits before the Unified Patent Court (Art 3 (a) UPCA), this is not the case for classical EP patents (cf. Art 3 (c), (d) UPCA). For EP patents and applications pending at the date of entry into force of the Agreement, Article 83 UPCA defines a rather liberal transitional scheme allowing EP patent proprietors and applicants to make use of the present European post-grant patent system for many years to come. This transitional scheme consists of two basic elements, a transitional period and an opt-out mechanism.
With Document 7265/13 dated March 08, 2013, the Irish EU Presidency has published some information concerning setting up of the Preparatory Committee in the context of the Agreement on a Unified Patent Court. A meeting of the Friends of the Presidency group (Patents; see Document CM 1560/13) was convened on February 27, 2013, with the objective of both hearing and considering delegations’ views on how this Preparatory Committee could be organised. According to the recently published Document, a clear consensus emerged from the Signatory States endorsing a non-paper circulated by The Netherlands and Sweden, including the proposal that the work be driven by the Member States, and thus outside the framework of existing institutional structures. In this latter respect, a number of Signatory States offered to put their resources – human and/or logistical – at the service of the Preparatory Committee once it begins its work. The European Commission offered its expertise, as and when requested by the Preparatory Committee.
Now, the Permanent Representatives Committee (COREPER) is invited to take note:
- of the agreed position of the Signatory States regarding the Preparatory Committee of the Agreement on a Unified Patent Court, as set out in the paper contained in the Annex to Document 7265/13 and in the cover note thereof;
- of the intention of the Presidency to convene the inaugural meeting of the Preparatory Committee on 26 March 2013 in Brussels; and
- that Council, at the appropriate level, will be kept informed of progress of the work of the Preparatory Committee when needed.
A list of four main tasks to be elaborated in groups with project teams can be identified:
- Legal framework,
- Financial aspects,
- IT & Facilities, and
- Human resources & Training.
The final package of the Leahy-Smith America Invents Act (H.R.1249, pdf) will enter into force on 16 March 2013 (for a list of amendments and their effective dates, see here). By this date, the most significant amendments of the new Act will enter into force, namely the transformation from the traditional first-to-invent regime to the new first-inventor-to-file regime.
Besides reducing the USPTO’s backlog of approx. 680.000 patent applications and improving patent quality, the main objective of the America Invents Act is to harmonise the US patent system better with international patent law standards and by that facilitate second filings of US applicants in foreign jurisdictions.
This is indeed a brilliant idea, not only for US applicants but also for European applicants and practitioners, as it will align the US system closer with the European patent system. However, event for those legal instruments that are clearly adapted to the European point of view, important differences remain. Some of those tiny differences that may have a huge impacts on practice are outlined below:
On March 16, 2013, the final (third) package of the Leahy-Smith America Invents Act (H.R.1249, pdf) will enter into force. This will include the transition from the traditional US fist-to-invent system to the first-to-file system as used in the rest of the world. In a recent press release the USPTO announced publication of the
- Examination guidelines for implementing the first inventor to file provisions and the
- Final rules to implement the first inventor to file provisions.
On this blog’s German sister blog ksnh::jur we recently published a series of three postings dedicated to the changes the America Invents Act causes to US patent law. As this piece of US legislation implements one of the most important reforms of internation IP law in recent years, its provisions, legal effects and possibel shortcommings have been extensively – and partly exellently – discussed by so many US blogs that there surely is no need to add another synopsis on a Europe-focussed IP blog like this.
However, as a large portion of our regular readers live and practice in the German-speaking part of Europe, we thought that some of them might appreciated to read about this topic in their mother tongue. The three articles are structured parallel to the three packages of the AIA that enter(ed) into force on 16 Sep 2011 and 16 Sep 2013 and on 16 Mar 2013:
Die Änderungen im US-Patentrecht durch den ‘America Invents Act’
Inspired by this discussion of our recent posting on the latest draft UPC rules of procedure it appears to be high time to have a closer look into Article 48 UPC and related Rule 286 RoP in order to possibly figure out the legislator’s idea of representation rights.
As European and German patent attorneys we still remember the recommendation of the 2006 Venice Patent Judges Symposium according to which only “attorneys-at-law who are fully entitled to represent parties in ordinary civil proceedings in the courts of first instance of the convention states” should be authorised to represent cases before the UPC (see Venice II resolution, page 11, item 5). Later, at the peak of the lobbying battle for representation rights (see e.g. here and here) also the European Parliament’s JURI Committee and its influential rapporteur Klaus-Peter Lehne, an attorney-at-law and partner of international law firm Taylor Wessing, urged it is of “utmost importance” that
the parties should be represented only by lawyers authorised to practise before a court of a Contracting Member State; the representatives of the parties might be assisted by patent attorneys who should be allowed to speak at hearings before the Court [2011/2176 (INI)]
Different voices came from industry organisations, patent practitioners and academia, who raised for good reasons (see here, here, here) that European Patent Attorneys should be authorised to represent their clients before the UPC as well.
Before this background, Article 48 UPCA can be understood as an acceptable compromise:
(1) Parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State.
(2) Parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.
(3) The requirements for qualifications pursuant to paragraph 2 shall be established by the Administrative Committee. A list of European Patent Attorneys entitled to represent parties before the Court shall be kept by the Registrar.
(4) … (7)
According to this provision, basically three groups of professionals are authorised to independently represent cases before the UPC, namely
- European Patent Attorneys having the European Patent Litigation Certificate, and
- European Patent Attorneys having an appropriate qualification.
Today, on February 19, 2013 at 1415h, the signing ceremony of the International Agreement on the establishment of the Unified Patent Court
will take has taken place in the Justus Lipsius building of the Council of the European Union located in Brussels.
The event can be followed by video streaming:
As far as we know, 22 countries are today going to sign the Agreement (in brackets: year of accession to EU or predecessor organisations):
- Austria (1995),
- Belgium (1952),
- Cyprus (2004),
- Denmark (1973),
- Estonia (2004),
- Finland (1995),
- France (1952),
- Germany (1952),
- Greece (1981),
- Hungary (2004),
- Ireland (1973),
- Italy (1952),
- Latvia (2004),
- Lithuania (2004),
- Luxembourg (1952),
- Malta (2004),
- Netherlands (1952),
- Portugal (1986),
- Romania (2007),
- Slovakia (2004),
- Sweden (1995), and
- United Kingdom (1973)
Bulgaria (2007),(see UPDATE below) the Czech Republic (2004), (see UPDATE below)
- Poland (2004) and
Slovenia (2004)(see UPDATE below)
have indicated that they would not be in a position to sign the agreement next week because they still had technical issues to resolve. They are expected to sign at a later date.
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While nowadays most of the initial filings with the European Patent Office (EPO) or with the Office for Harmonisation in the Internal Market (OHIM) are made via electronic means, a lot of other communication between the respective Office and the applicants or their representatives usually still is dealt with by paper-based means. For example, the EPO sends an awful amount of registered letters every day, and the OHIM mainly uses telefax for sending out Official communications and for receiving responses thereto.
In this context it should be noted that the new Unified Patent Court will be the first major European institution in the field of IP which adopts a policy solely allowing electronic communication, effectively banning all paper-based backdoors. Article 44 of the Agreement on a Unified Patent Court stipulates:
The Court shall make best use of electronic procedures, such as the electronic filing of submissions of the parties and stating of evidence in electronic form, as well as video conferencing, in accordance with the Rules of Procedure.
In the 14th Preliminary set of provisions for the Rules of procedure of the Unified Patent Court this matter is picked up by Rule 4, reading as follows:
Rule 4 – Lodging of documents
Written pleadings and other documents shall be lodged at the Registry in electronic form. Parties shall make use of the offcial forms available on-line.
“Written pleadings and other documents shall be lodged at the Registry in electronic form” – no exceptions allowed. At first we note that the internal competence for dealing with filings appears to lie with the Registry of the Court. As a second point, there will be “offcial forms” for each and every potential filing which must be usted and, after being filled in, filed electronically.
Moreover, throughout the full text of the Draft Rules of Procedure there are 25 mentions of “electronic address” of the Court and/or parties involved.
Neither those above-mentioned “official forms” nor the “electronic addresses” are explained in any technical detail within the Draft of the Rules of Procedure.
Closely related to these on-line issues are telephone and video conferences as indicated in Rule 105. There is no Rule defining applicable technologies for such purposes.
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The k/s/n/h::law blog
Some of the patent attorneys of the KSNH law firm have joined their efforts to research what is going on in the various branches of IP law and practice in order to keep themselves, their clients as well as interested circles of the public up to date. This blog is intended to present results of such efforts to a wider public.
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