proceedings before the Unified Patent Court AIPPI Forum 7 September 2013, Helsinki by Dr. Klaus Grabinski Federal Court of Justice (Bundesgerichtshof), Germany
I. Written Procedure I. Statement of claim 1. Which Local/Regional Division? place of infringement or seat of defendant if seat of defendant is not in a PMS: Central Division if the MS has no LD/RD: Central Division 2. Which language? official language(s) of MS hosting the LD or RD and/or one or more of the official languages of EPO or language of the EP-in-suit with the agreement of the parties and approval of the panel at the request of one party by decision of the President of the CoFI 3. Fully fledged, no skeleton statement, in particular with regard to facts and evidence relied on reasons why the facts constitute an infringement 2
I. Written Procedure II. Preliminary objection 1. Within 1 month (of service of the Statement of claim) 2. Objections concerning the jurisdiction and competence of the Court the competence of the division indicated by the claimant the language of the Statement of claim 3. Request for a transfer from a Regional Division to the Central Division all facts and evidence that support the existence of the same infringement in 3 or more Regional Divisions, cf. Art. 33 (2) 2 Agreement 4. Decision by the Judge-Rapporteur 5. Rejection of a preliminary objection may only be appealed with leave of the Court. 3
I. Written Procedure III. Statement of defence + (possibly) counterclaim for revocation 1. Within 3 months (of service of the Statement of claim) 2. Statement, in particular with regard to facts and challenge to the facts relied on by the claimant/the evidence relied on reasons why the action shall fail (possibly) grounds of revocation (possibly) statement with regard to the option provided for in Art. 33 (3) 4
I. Written Procedure IV. Reply to the Statement of defence + Defence to the counterclaim for revocation + (possibly) Application to amend the patent 1. Within 2 months (of service of the Statement of defence) if no counterclaim for revocation: within 1 month 2. Statement, in particular with regard to facts and evidence relied on reasons why the counterclaim for revocation shall fail statement with regard to the option provided for in Art. 33 (3) explanation as to why the (auxiliary) amendments satisfy the requirements of Art. 84, 123 (2) and (3) EPC any subsequent request to amend the patent may only be admitted with the permission of the court! 5
I. Written Procedure V. Rejoinder to the reply to the Statement of defence + Reply to the Defence to the counterclaim for revocation + Defence to the Application to amend the patent 1. Within 1 month (of service of the Statement of defence) 2. Statement, in particular with regard to facts and evidence relied on reasons as to why the proposed (auxiliary) amendments are not allowable under Art. 84, 123 (2) and (3) EPC 6
I. Written Procedure VI. Application of Article 33 (3) of the Agreement 1. As soon as possible after the closure of the written procedure 2. the Panel shall decide by way of order how to proceed with respect to 3. Art. 33 (3) a) proceed with both the action for infringement and the counterclaim for revocation + request the allocation of a technical judge b) refer the counterclaim for revocation for decision to the central division + suspend or proceed with the action for infringement c) with the agreement of the parties, refer the case for decision to the central division. 7
II. Interim Procedure 1. Judge-Rapporteur as case manager. 2. Interim conference where appropriate. 3. Aim of the interim conference: identify the main issues and determine which relevant facts are in dispute establish a schedule for the further progress of proceedings explore the possibilities to settle the case issue orders regarding production of further evidence, inspections, witnesses, etc. prepare the oral hearing 4. Interim conference may be held by telephone or video conference. 5. Duration of Interim Procedure: up to 3 months (as a general rule). 8
III. Oral Procedure 1. Oral hearing held before the panel under control of the presiding judge 2. Course of the oral hearing: (possibly) preliminary introduction to the action by presiding judge (PJ) and the judges parties oral submissions can be limited by the PJ after consulting the panel questions to parties or representatives by judges questions to witnesses or experts by judges and parties 3. Duration of oral hearing: 1 day (as a general rule). 4. Adjournment in exceptional cases, when further evidence is required. 9
IV. Decision on the merits 1. Issue of decision (possibly) within 6 weeks after the closure of the oral hearing in exceptional cases, immediately after the oral hearing 2. Orders: permanent injunction corrective measures (recall, destruction, etc.) communication of information publication of decision damages and compensation revocation of patent, entirely or partially 3. In case of a split of proceedings: decision on the merits of the infringement claim under the condition that the patent is not held to be entirely or partially invalid or stay of proceedings in the discretion of the panel mandatory when there is a high likelihood of success of the counterclaim for revocation 10
V. Procedure for the determination of damages and compensation 1. Separate proceedings The determination of the amount of damages ordered for the successful party may be the subject of separate proceedings. 2. Request to lay open books 11
VI. Procedure for cost order 1. Separate proceedings A cost order may be the subject of separate proceedings following a decision on the merits and, if applicable, a decision for the determination of damages. 2. Rule in Art. 69 (1) of the Agreement Reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity requires otherwise, up to a ceiling set in accordance with the rules of procedure. 3. Rules of Procedure Representation costs Administrative Committee shall set ceilings to such costs by reference to the value of the dispute Costs of experts, witnesses, interpreters and translators 12
VII. End Thank you for your attention! 13