10 Points on the European Unitary Patent and the Unified Patent Court

This is based on a talk given by Kevin Mooney to the CIPA Life Sciences Conference on 14 November 2013.

1.  The European unitary patent has come about in response to the perception that diverse litigation systems across Europe are a problem.  There are significant difference in procedure (e.g. the extent of reliance on expert witnesses) and in the speed and costs of the different systems.   The quest for unitary patent system started in 1975 with the Community Patent Convention.

2.  The objectives of the new system are a single patent, a single litigation procedure with experienced judges, quality, efficiency and legal certainty.  One incentive to use the new procedure will probably be reduced costs due to reduced renewal fees, although this is not straightforward as under the present ‘bundle of patents’ system renewal costs can be decreased in later years by reduction of designations (which won’t be possible with the unitary patent).

3.  The Unified Patent Court (UPC) will have local, regional and central divisions.  This gives a plaintiff lots of places to sue.  The language will also be chosen by the plaintiff though there provisions for language to be the one in which the defendant normally conducts business.

4.  We are now at the 15th draft of the rules of procedure [In fact subsequent to this talk we are now at the 16th draft].  The litigation procedure has 3 parts:

– a written part lasting 6 months  (claims, counterclaims, applications to amend the patent, etc)

– an interim procedure lasting 3 months, where the judge-rapporteur is essentially preparing the case for a oral hearing

– the oral hearing, typically lasting 1 day.

5.  The appeal will not be a retrial and normally no new evidence will be submitted.

6.  The Court will have a broad discretion as to whether to bifurcate at end of the written procedure. Bifurcation is expected to be rare.  The Court will have the discretion to stay infringement proceedings if it decides to bifurcate and the expectation is that they would stay.

7.  The conditions for provisional measures (injunctions, etc) are that the applicant is entitled to commence proceedings, the patent is valid and the right has been infringed.  In addition the Court must weigh up the interests of parties.  There is also a provision for compensation of defendants if the provisional measure was incorrectly granted.

8.  At the moment there is discussion of whether to charge for opting out of the unitary patent (back to the present ‘bundle of patent’ system).  The pharma and biotech sectors have indicated they would opt out since the new system is untried.

9.  For the litigation there is a fixed fee for each part, and a controversial value-based fee for counterclaims for revocation.

10.  Representation is a much discussed point.  Lawyers or patent attorney will have representation rights and these are being defined very broadly.

You may also wish to see related articles 10 Observations on Patent Litigation and 8 Disadvantages of a Specialist Patent Court.

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