If court proceedings took many years and a final decision was delivered only after, say, ten years of endless deliberations or so, delivering  justice this late might well be perceived as delivering no justice at all. Hence, when composing present Draft of the Rules of Procedure (RoP) for the envisaged Unified Patent Court under the still-to-be-ratified Unified Patent Court Agreement (UCPA), the Members of the Drafting Committee under the guidance of the Preparatory Committee apparently thought it might be a good idea to set short time limits within the numerous stages of the Court proceedings in order to reach a decision in the first instance after one year.

But you can fall down from a horse on either side of the saddle.

When working as a European Patent Attorney before the European Patent Office you may get accustomed to terms and deadlines that usually are integer multiples of one month, e.g. four months or six months in case of responding to a normal Office Action.

For observers from outside the law firm business this might sound like an indication of slothfulness and bureaucratic procrastination. But in reality months can pass by quite rapidly if you need instructions from a client that is not sitting a few steets apart form your Office but on another continent.

Take, for example, a case where an attorney seated in Munich acts on behalf of a client C located somewhere in the United States or in Japan. Let us further assume a frequently occurring constellation where this client C has outsourced co-ordination of overseas legal matters to a local law firm L seated in San Francisco or Tokyo, respectively.

In this case, the chain of communications from EPO to the applicant then goes as follows:

EPO --> Munich Attorney --> Law Firm (San Francisco / Tokyo) --> Applicant
Applicant -->  Law Firm (San Francisco / Tokyo) --> Munich Attorney --> EPO

If merely a routine Communication of the EPO is to be answered, this chain normally is traversed only once. In the first step, the Munich attorney takes the file of the application, reads the Official Communication and writes a statement explaining its meaning, in many cases providing a sketch of the options as to how to reply thereto. When received by the intermediate Law Firm, usually an attorney located there issues another comment to put the EPO Office Action and the statement of the Munich attorney into a wider context of the overall strategy of the client. Within the client’s organisation, multiple departments and/or persons may contribute to the instructions eventually to be routed back to the Munich attorney via the intermediary Law Firm. Only after this series of exchanges of messages the Munich attorney can start with drafting a proper reply to be submitted with the EPO. In this example, at least four communication steps are necessary to receive proper instructions on how to draft a response in face of the deadline.

Of course, theoretically it is possible to hold available all the time spare attorney’s capacity in Munich and at the intermediate Law Firm (in our example in San Francisco or Tokyo) at standby in order to be prepared to immediately work on incoming communications. It is clear, however, that doing so must be an expensive exercise. Hence, in order to have a balanced workload for all nodes within the communication chain, some delay needs to be accepted. In practice, terms of several months are proven to be acceptable in most cases.

When browsing the various Rules in the 15th Draft version of the Rules of Proceedings, the fact attracts attention that there are numerous deadlines buried therein counting just from 10 to 20 days. And it is to be expected that litigation cases might be much more complex and stakes therein might be much higher than in simple prosecution cases. Therefore, it can safely be assumed that the above-mentioned chain of communication in many cases needs to be traversed more than once when litigation matters before the UPC are dealt with. And again only after this series of communication steps the response to the Court can be drafted by the Munich attorney and eventually filed with the Court.

Below find a list of Rules that comprise such tough deadlines: 

  • Rule 16 – Examination as to formal requirements of the Statement of claim
  • Rule 19 – Preliminary objection
  • Rule 27 – Examination as to formal requirements of the Statement of defence
  • Rule 39 – Language of the proceedings before the central division
  • Rule 89 – Examination as to formal requirements (ex parte proceedings)
  • Rule 142 – Defence of the unsuccessful party and Reply to Defence
  • Rule 197 – Order to preserve evidence without hearing the defendant
  • Rule 198 – Revocation of an order to preserve evidence
  • Rule 207 – Protective letter
  • Rule 213 – Revocation of provisional measures
  • Rule 221 – Application for leave to appeal
  • Rule 224 – Time periods for lodging the Statement of appeal and the Statement of grounds of appeal
  • Rule 229 – Examination as to formal requirements of the Statement of appeal
  • Rule 235 – Statement of response
  • Rule 238 – Reply to a statement of cross-appeal
  • Rule 252 – Examination as to formal requirements of the Application for rehearing
  • Rule 321 – Application by both parties to use of the language in which the patent was granted as language of the proceedings
  • Rule 323 – Application by one party to use the language in which the patent was granted as language of the proceedings
  • Rule 371 – Time periods for paying court fees
  • Rule 379 – Examination and decision

When studying these Rules it becomes clear that not all of them are purely technical; some of them require research and careful evaluation of strategic options.

This scheme of terms and deadlines not only puts attorneys under stress; client organisations may also be affected as well. If a large public company acts as party to Court proceedings, one may assume that there is a well-staffed patent department. If the head of this department is out of office, there will be a deputy having substantially the same knowledge as the superior. Hence, one might argue that this company should be able to take decisions within a few days if so required by the RoP.

However, what about representing a client from the SME range? Under such assumption strategical decisions in many cases solely depend on the Managing Director in person. But what can be done if, for example, the Managing Director is out for, say, a fortnight on an extended business trip to another continent? I imagine a Munich attorney spending  hours in the evening or in the early hours of the day desperately trying to get the Managing Director of a German SME Client happening to be party to UPC proceedings on the phone in a hotel in Shanghai or Palo Alto in order to discuss difficult but utmost important questions concerning the Court case. Surely the Managing director will also be dismayed learning that a crucial deadline will lapse in a few days, the response to be filed contributing perhaps in a make-or break fashion to the fate of the Court case (and, maybe, to that of the company).

It is important to understand that the difficulties discussed above are not caused by technical delays of the communication processes. In the days of e-mails and electronic Court filings (as prescribed by the RoP), these delays can be neglected (if all systems continue to work properly). However, the decisions as to how to respond to a Court communication still need to be taken by humans, and those non-technical but social steps set the limits for minimum terms and deadlines prescribed in the RoP.

And, I do not say that such terms as proposed in the 15th Draft of the RoP can by no means be met in practice. However, setting up organisational measures on hot standby in order to cope at any time with, say,  a 10 days deadline will cost extra efforts and money. SMEs will probably be challenged by the proposed short terms and deadlines more than bigger companies because of on top of their invoice presented by external attorneys  they might struggle also to make sure that their (usually very small) bunch of internal top brass personnel (often only the Managing Director) can be accessed virtually at any time in order to obtain crucial decisions within very few days.

Hence, concerning the 15th Draft of the RoC, I’m not so sure that minimum requirements as discussed above are met.

 (Picture: (C) 2009 by jimmyharris via Flickr and licensed under the terms of a CC license [2013-09-01])

About The Author

Axel H. Horns

German & European Patent, Trade Mark & Design Attorney

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