The 18th draft Rules of Procedure for the Unified Patent Court have been published by the Unified Patent Court Preparatory Committee. Changes to the Rules since the 17th draft include:
• An ability for a proprietor not on the Register to opt a patent out of the jurisdiction of the Court (Rule 5.1(b)) and a requirement, when opting out, to file a declaration of proprietorship (Rule 5.3(e)). If an opt-out is defective, it can be corrected and takes effect only once corrected (Rule 5.6).
• An ability for a new proprietor of a patent to take the place in proceedings of an existing proprietor (Rule 8.4), even if the new proprietor is not registered as such on the Register (Rules 8.5, 43.2 and 60.3).
• Clarification of the language regime in countries (such as Belgium) where there is more than one official language. In the 17th draft, it was specified that the Claimant may choose the language in such situations (Rule 14.2) subject to certain provisos. One of the provisos was that a Contracting Member State may indicate that the official language “of the region of the defendant’s business” shall apply. The 18th draft simply adds that a Contracting Member State may similarly indicate that the official language “of the defendant” shall apply (Rule 14.2(b)). In either case, if there are two or more such defendants with different languages, the claimant may choose.
• Where one of the EPO languages (English, French or German) is designated instead of a local official language, the Court may, during oral proceedings, use an official language of the Member state hosting the local division or an official language designated by the states sharing a regional division (Rule 14.2(c)).
• The periods for reply (by the claimant) to the statement of defence in the case where there is no counterclaim for revocation has been extended from one month to two months (Rule 29(a)) to match the period for reply when there is a counterclaim.
The previous period of one month was ambitious and probably unrealistic and likely to call for extension on a regular basis. Similarly, the period for reply (by the defendant) to the defence to counterclaim has been extended (Rule 29(d)) and the period for filing (by the defendant) of a defence to an application to amend (Rule 32.1) and the period for filing (by the claimant) of a defence to counterclaim for infringement (Rule 56.1).
• An application to amend must explain why the amendments satisfy Articles 84 and 123(2) and (3) EPC (Rule 50.2).
• A new rule (Rule 316A) has been introduced allowing forced intervention. A party may contend that a person should be bound by a decision in the action even where that person refuses to intervene. The person declining to intervene has one month to state that intention in writing or be bound by the decision. If such a statement is filed, the parties will be heard and the person declining to intervene may be given an ultimatum to do so or be bound by the decision.
• The rules for legal aid (Rules 376-381) have been expanded. The Administrative Committee is to set out: thresholds above which legal aid applicants are deemed wholly or partially able to bear their costs; maximum amounts of legal aid and of recoverable costs; and how income and assets are to be assessed.
The draft rules are now almost final. The Preparatory Committee is expected to publish one more set (the 19th iteration) imminently and then pass responsibility to the Administrative Committee for future changes after the Court is up and running.
UPC User's Meeting
At a UPC User Council meeting on 9 September, our Richard Parsons attended a review of the Case Management System to be used when the court comes into action. Key issues discussed included:
• the statement of claim being a pre-populated generic template with limited upload opportunities;
• document confidentiality; and
• the opt-out procedure.
Of particular concern was that the system in its present version only accepts credit card payments in relation to opting out of the UPC on a case-by-case process. This issue will not suit proprietors of large patent portfolios nor their representatives. Providing a bulk payment availability was a key action point from the meeting.
€80 per Patent to Opt out of the UPC
With the advent of the Unitary Patent Court anticipated in 2017 (see page 3), clients have an important decision in the coming year as to whether to opt existing European patents out of the jurisdiction of the new court.
This issue is discussed more fully in Hugh Dunlop’s book European Unitary Patent and Unified Patent Court, available from
firstname.lastname@example.org or from email@example.com. The recently agreed provisional phase of the Court (so-called “sunrise”) will be used to allow for early registration of opt-out demands.
European patents that issue before the unitary patent system comes into effect will be subject to the jurisdiction of national courts and the UPC (UPC Agreement Art. 83(1)). Opting out leaves such patents to the exclusive jurisdiction of the national courts. Opting out will be attractive to patent proprietors who do not wish to expose their patents to centralized invalidity. Opening jurisdiction to the new court will be attractive to those interested in enforcing their patents across many member states in a single action.
The proposed fee for opting out is €80.
One survey conducted prior to the publication of the fee showed that about half of those surveyed said they will definitely opt in at least some of their patents.
We will be contacting clients in the coming year to ask whether patents are to be opted out and to point out the significance of the deadline for doing so, when it is set.