Unified Patent Court. Breakfast Seminar Taylor Wessing, London. James Marshall, Dietrich Kamlah and Chris Thornham 10 April 2013, Wednesday

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1 Unified Patent Court Breakfast Seminar Taylor Wessing, London James Marshall, Dietrich Kamlah and Chris Thornham 10 April 2013, Wednesday

2 Overview >Structure of the Unified Patent Court >Patentee s strategies >Third party strategies 2013 Taylor Wessing 2

3 Sources > Agreement on a Unified Patent Court ( UPC Agreement ) ( ), including Statute of the Unified Court in Annex I > Rules of Procedure for the UPC (latest published draft, ) > Regulation (EU) No. 1257/2012 for the Unitary Patent (in force but applies from entry into force of the Agreement) > Regulation (EU) No. 1260/2012 for Translation Arrangements for Unitary Patent (in force but applies from entry into force of the Agreement) 2013 Taylor Wessing 3

4 Structure of the Unified Patent Court (UPC) > Entry into force (Art. 89) > The latter of: 1 January 2014; 1 st day of the 4 th month after deposit of 13 th instrument of ratification (to include UK, DE and FR); 1 st day of the 4 th month after entry into force of the amendments to Regulation (EU) No. 1215/2012. ( Brussels Regulation ) > Status of Spain and Italy 2013 Taylor Wessing 4

5 Main Principles > Decisions of the Court have pan-european effect (Art. 34) > The Court has exclusive jurisdiction in relation to : Unitary Patents European patents, but importantly subject to Art. 83 (transitional regime inc. opt-out). > Patents granted by national patent offices (i.e. not EPO) are outside the jurisdiction of the Court Taylor Wessing 5

6 Divisions and Judges (Art. 7 and 8) Local Division > every Member State can set one up, if they wish > panel will be 1 local legal judge plus 2 non local legal judges unless > more than 50 patent cases in that state during the last 3 years, panel shall have 2 local legal judges with 1 non local judge > for every 100 cases commenced per calendar year in 3 successive years, Member State can set up an additional local division (up to 4) Regional Division > for 2 or more Member States > 2 legally qualified judges from the region plus 1 legally qualified judge from outside the region > Panel of the Local/Regional Division could request, on its own initiative or upon request of the parties, an allocation of a technically qualified judge Central Division > seats in Paris with sections in London (for chemistry and life sciences) and Munich (for mechanical engineering) > generally, 2 legally qualified judges, nationals of different Member States, plus 1 technically qualified judge 2013 Taylor Wessing 6

7 Choice of Division (Art. 33) > Infringement actions can be brought: in Local/Regional Division where infringement occurs in Local/Regional Division where defendant resides if defendant is not in a Member State, in Central Division > Revocation actions to be started in Central Division > Counterclaims for revocation may be brought in Local/Regional Division where infringement actions started but note the discretion and options of the Local/Regional Division under Art. 33(3) (bifurcation?) 2013 Taylor Wessing 7

8 Languages (Arts ) > Languages of Central Division shall be the language of the patent > For Local or Regional Division, language will be: one of the official languages of the hosting Member State; or language designated by Regional Division; or EPO language designated by the Member States; or (in some circumstances) the language in which patent was granted. > Language before Court of Appeal will generally be language of first instance proceedings 2013 Taylor Wessing 8

9 Transitional Arrangements and Opt-Out (Art. 83) > Transitional period of 7 years after Agreement enters into force with the possibility of extension see Art. 83(5), during which: actions for infringement, revocation etc of EPs/SPCs may still be brought before national courts (unless an action already pending before Court), proprietor of /applicant for EP/SPC may opt out of Court s exclusive jurisdiction, provided notification of opt-out by the latest 1 month before expiry of transitional period withdrawal of opt-out possible, provided no action before national court already brought 2013 Taylor Wessing 9

10 In or out? What to do with patent portfolios? > In the transitional period, patentees have a choice to enforce their EPs either nationally or in the UPC > No opt-out is required now for suing in national courts later > BUT: Potential infringers also have a choice where to bring invalidity actions > Without opt-out, EPs can be invalidated for all countries with one single revocation action in the Central Division. > Pros and Cons of opt-out? > Pro: no central revocation action > Pro: Opt-out can be revoked to enforce the patent in the UPC > Con: If third party starts one national revocation or DJ action after opt-out, the opt-out is final Taylor Wessing 10

11 Here, there and everywhere? Enforcing patents in the UPC >Which court is it going to be? Patentee s choice! > Decisions of any Local Division have effect in all UPC states > Competing jurisdiction, choice of patentee-friendly venue > Multiply your chances, make it burdensome for infringers! > Proceedings between the same parties based on the same patent have to be brought in the same division of the UPC > BUT: Cases based on different patents or against different defendants can be tried in different Local/Regional Divisions >If you want bifurcation, bring infringement claims through a licensee! > Revocation counterclaim against licensee not admissible > Handling of revocation counterclaim against patentee in this case unclear 2013 Taylor Wessing 11

12 Third party strategies > Clearing the way before launch if EP opted out (litigate country-by-country): In Germany: cannot bring nullity action if EPO opposition pending In UK: bring action for revocation and/or declaration of non-infringement For an EU patentee seek declaration of non-infringement in patentee s home Court for all EP parts? For non-eu patentee seek declaration of non-infringement in UK for all EP parts? > Clearing the way before launch if EP opted in, or UP granted Bring action in Central Division for revocation Can have revocation action in UPC in parallel with EPO opposition No backlog initially, so Central Division ought to be (much) quicker Bring action in Central Division for declaration of non-infringement BUT if an infringement action is started in a Local or Regional Division the declaration of non-infringement action can be stayed 2013 Taylor Wessing 12

13 Third party strategies (continued) > If not enough time to clear the way before launch? Launch first in a jurisdiction where prefer to litigate If strong non-infringement case: speed of Court important; bifurcation may not be If strong invalidity case: get on with revocation action in Central Division? If an infringement/validity squeeze : try to steer case to a Court that does not bifurcate Write to patent proprietor to provide assurances that not launching without notice in some places? Give assurance for places where would prefer not to litigate Provoke infringement action(s) in places where no assurances given? 2013 Taylor Wessing 13

14 Third party strategies (continued) > Avoid the effects of UPC litigation? If it s an EP that s opted in: Start a national torpedo action (declaration of non-infringement for all EP parts) in a slow jurisdiction Argue that jurisdiction is seized, so the UPC cannot hear the case Move manufacturing/distribution out of the UPC s reach Do this to avoid orders for injunctions or delivery up Move to Spain (not part of UP or UPC) Move to Norway, Switzerland or Turkey? (EPs available but not part of the EU and not part of the Unitary Patent and UPC project) 2013 Taylor Wessing 14

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