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"EU Unified Patent Court"
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) --> ApplicantApplicant --> 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.
In Janurary this year I was happy to report that
In a move towards greater transparency, the European Patent Office is improving the access to the documents of the Administrative Council of the European Patent Organisation. Under this new policy, all public documents of the Administrative Council will be made available after each session and published on the EPO’s website. The documents of the October 2012 session are already accessible.
Well, let as have a look what actually has been published there …
Today, on August 30, 2013, I can see there a whopping bunch of 17 (seventeen) publicly accessible AC documents dated 2013, most of them reflecting minor technicalities. Even without having any privileged insights into the inner workings of the AC I feel much on the safe side to assert that just 17 published documents are a trickle compared to the full registry of documents circulated in that body during that time period. And, even this publication of a tiny minority of CA documents has not been announced widely and is hardly to find on the website of the EPO if you don’t already know where to look.
There appears to be only one valid conclusion: The public repository of CA documents as we see it now merely is sort of a fig leaf excuse for not wanting to have much insight into the CA business for the general public.
In this context it is important to closely examine the responsibilities: It would be grossly unfair to blame EPO personnel for this misery, Surely the general policy governing the public availability / confidentiality of CA documents is defined by the CA itself, not by EPO or its President. And the CA is made up of Representatives appointed by the EPC Member States (see Article 26 EPC). And those Representatives are not only selected by their respective national Government but also instructed, briefed, and supervised by the ministry in charge with IP politics (in most cases Ministry of Justice, I’d guess).
This means that on a high ministerial level the general thinking is that it would not be good to give plenty of information out to the general public about the proceedings of the CA of the EPO.
But it goes from bad to worse.
Earlier this year the Agreement on creating a European Unified Patent Court was signed in Brussels. As it is well known, now the Agreement needs Ratification by at least 13 participating EU Member States, including the “Big Three”, namely Germany, United Kingdom, and France, to enter into force.
While the languages of the Agreement itself and its related Statues of the Unified Patent Court are technically fixed by the signatures of the representatives of the participating EU Member States and, hence, are to be considered as final, the Rules of Procedure (RoP) have been published so far only in their 15th Draft version. According to Article 41 of the Agreement, the Rules of Procedure shall lay down the details of the proceedings before the Court. The Rules of Procedure need to be be adopted by the Administrative Committee on the basis of broad consultations with stakeholders.
As the Administrative Committee of the Unified Patent Court can constitute itself only after the Agreement has effectively entered into force, currently there is no competent body to take any binding decision in that respect.
However, the participating Member States of the EU have agreed to create a Preparatory Committee (made up of Representatives of those States like it will later on happen with regard to the Administrative Committee and currently chaired by Mr. Paul van Beukering) informally anticipating the text of the Rules of Procedure. After entering into force of the Agreement (in some future) it is politically expected that after formal inauguration of the Administrative Committee the latter will more or less just rubber-stamp the proposals of the Preparatory Committee. The present Draft Rules of Procedure have been prepared by a drafting Committee of expert judges and lawyers, and has been the subject of technical consultations with professional and industry bodies. The Drafting Committee was composed as follows:
- Kevin Mooney (UK, Chairman)
- Klaus Grabinski (DE)
- Willem Hoyng (NL)
- Winfried Tilmann (DE)
- Pierre Véron (FR)
- Alice Pezard (FR)
- Christopher Floyd (UK)
We would like not to omit to remind you that from
25 June 2013 until 1 October 2013
the Draft Rules of Procedure are be open to written comments from stakeholders or other interested parties. Respondents are requested to send them to
secretariat@unified-patent-court.org.
Only contributions received through this address will be considered. According to the Roadmap as published, the Adoption of Rules Procedure in the Preparatory Committee is then planned to happen by July 2014.
In order to simplify access to and citation, quotation and hyperlinking of the available texts of the Agreement, the Statute as well as the Rules of Procedure on an Article-by-Article or Rule-by-Rule mode, respectively, KSNH has provided an informal Wiki-Style version thereof:
- Unified Patent Court Agreement (UPCA)
- UPCA Statues of the Unified Patent Court
- Preliminary set of provisions for the Rules of procedure of the Unified Patent Court
However, yet not all cross-links between the Articles and/or Rules are in place.
In this earlier posting we discussed the compatibility of the Unified Patent Court Agreement (UPCA) with the Acquis Communautaire of the European Union. One of those aspects was an adaption of the Brussels I Regulation (Ref 1215/2012), which ensures recognition and enforcement of national court judgements in other EU member states (see also here and here). Article 89(1) UPCA requires that an adapted Brussels I Regulation entered into force before the UPCA can itself enter into force.
Thus, the task is to implement the Unified Patent Court as a court common to a subset of EU member states and subject to the same obligations under EU law as any other national court. A similar situation applies to the Benelux Court of Justice. As this court up to now only provided preliminary rulings on interpretation of the national law of Belgium, The Netherlands and Luxembourg, it is now receiving new jurisdictional competences from the national courts of those three countries, thus giving cause to an adaptation of the Brussels I Regulation as well.
As the Brussels I Regulation up to now only relates to EU-wide recognition of civil and commercial judgements of national courts, it is apparent that a mechanism is required to ensure recognition of UPC judgements among the EU member states.
Now the EU Commission has issued a proposal for an amendment (COM(2013) 554 final) to clarify how the jurisdictional rules of Brussels I will work in the context of the UPCA and should be applied in relations between EU and UPC Member States (see press release).
Reades of this blog may have noticed that we try to cover the discussion about representation rights of European Patent Attorneys before the new Unified Patent Court. Our recent postings related to this issue may be found here, here, and here.
According to Art. 48 (1) UPCA, all national lawyers of the UPC member states are entitled to represent cases before the UPC, regardless of their knowledge and experience in patent law and practise. Art 48 (2) UPCA grants such individual representation rights also to European Patent Attorneys according to Art 134 EPC, if they have an “appropriate qualification such as a European Patent Litigation Certificate“.
Now a proposal of the Institute of Representatives before the European Patent Office (epi) came to our attention (download) in which criteria for the required “appropriate qualification” and a structure of the European Patent Litigation Certificate are proposed to the UPC Preparatory Committee which is in charge of definig this issue.
Appropriate Qualification: The paper states that an appropriate qualification of a European Patent Attorney (EPA) should include
abilities [...] going beyond the European Qualification Examination [...]. They should, in particular, reflect the necessary and desirable skills and knowledge for representation before the UPC.
A source of such abilities is seen in the
extensive experience acquired as patent attorney in their respective EPC member state, going beyond representation before the Patent Office.
Yesterday, the much awaited website of the UPC Preparatory Committee went live under the domain www.unified-patent-court.org. A main purpose of this website is to inform the public about the Committee’s work and the UPC as such (see e.g. Q&A section). One of the most important tasks of the Committee is the preparation of the Rules of Procedure of the future Unified Patent Court.
After an inofficial 15th Draft has been leaked early June, the official 15th draft of the Rules of Procedure has been published yesterday and opened for
public consultation until 1 October 2013.
Written comments are to be submitted to secretariat@unified-patent-court.org. So, please, colleagues, readers, and fellow bloggers, study the official draft and make submissions to the Preparatory Committee if necessary.
The further procedure after closure of the public consultation is explained as well:
[...] the Committee shall after closure of the written phase of the public consultation ask the Drafting Committee to evaluate the contributions received and to make proposals and comments ensuing from the public consultation. Further, the Committee intends to organise a public hearing on the draft rules of procedure in early 2014. The European Commission shall be asked to advise on the compatibility of the Rules of Procedure with European Union law. This will form the basis for the Committee’s Legal Framework Working Group to prepare the draft Rules of Procedure for approval by the Committee. As with all of the Committee’s preparatory work, also the Rules of Procedure will need to be adopted by the UPC’s Administrative Committee once it has been established.
The official version of the 15th draft differs form the inofficial version in a number of ways. One significant difference relates to Rule 286 governing, inter alia, the conditions under which non-lawyers (i.e. professionals that are not attorneys-at-law) may independently represent cases before the UPC. This rule has previously been criticised on this blog because of its striking lack of clarity (see here for the inofficial 15th draft version and here for the 14th draft version), as the 14th draft contained the unclear term “jurist” and the inofficial 15th draft contained an even more unclear recursive definition of the term “lawyer”.
Clarified Rule 286 (1) of the 15th draft RoP now reads as follows, with the crucial sentence highlighted:
A representative pursuant to Article 48(1) of the Agreement shall lodge at the Registry a certificate that he is a lawyer authorised to practise before a court of a Contracting Member State. Lawyers within the meaning of Article 48(1) of the Agreement are also persons possessing a law degree (jurist) who are authorised by the Swedish Patent Attorneys Board or equivalent body in a Contracting Member State. They shall lodge a certificate evidencing such authorisation. In subsequent actions the representative may refer to the certificate previously lodged.
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.
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.
MISCELLANEOUS
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