Preparatory Committee adopts the UPC Rules of Procedure
22 October 2015
On October 19, 2015, the Preparatory Committee for the Agreement on a Unified Patent Court (UPCA) unanimously adopted the Rules of Procedure for the Unified Patent Court (UPCAROP) for European Patents with or without a unitary effect.
On October 19, 2015, the Preparatory Committee for the Agreement on a Unified Patent Court (UPCA) unanimously adopted the Rules of Procedure for the Unified Patent Court (UPCAROP) for European Patents with or without a unitary effect. This is a great step forward in preparing for the entry into force of the UPCA which needs ratification by at least 13 UPC contracting states, including France, Germany and the United Kingdom.
It has been a long journey since the work on the UPCAROP began. The initial basis for the UPCAROP was a draft-set of rules created under the auspices of the European Patent Litigation Agreement (EPLA) project prepared by the European Patent Office (EPO). A second source of input was given by a group of European patent judges and patent lawyers which devised principles on a future patent court procedure. The EU Commission and a group of private business experts and legal practitioners worked out the first draft of the UPCAROP. The work was then taken over by a Drafting Committee commissioned by the Commission and, later, by the UPC Preparatory Committee (chaired by Kevin Mooney).
After the Preparatory Committee had provisionally finished the draft UPCAROP in 2013, all interested parties were given the chance to comment on the draft in writing and a public hearing was organized in Trier, Germany at the beginning of 2014. All comments were evaluated by the Drafting Committee and the Legal working group of the Preparatory Committee (chaired by Johannes Karcher), which led to a thorough re-drafting. In June 2015, the Preparatory Committee, in principle, agreed on the text. However, further legal refinements continued until the adoption of the UPCAROP in October, 2015.
The main principles of the UPCAROP are as follows:
- The Court will actively manage the proceedings with an aim to conclude the first instance proceedings within one year.
- There will be, after the written procedure, an interim procedure in which the judge rapporteur together with the parties will prepare the case for the oral hearing.
- There will be electronic filing and an electronic file.
- The first instance will consist of local and regional divisions and a central division for revocation actions. However, the defendant in infringement actions before the local and regional divisions will also be able to raise a revocation counterclaim.
- The sanctions in case of infringement (injunction, damages, information) are modelled on the Enforcement Directive.
- The court fees (which are not yet finally decided upon) will be moderate.
- There will be a cap on recoverable costs.
- The Court may enforce its own decisions by imposing penalty payments.
- Questions of EU law must be referred to the CJEU.
- Finally, part of the UPCAROP is devoted to the transitional period during which parties remain free to use the national courts and a patentee can even exclude a patent or patents from the jurisdiction of the UPC (so-called opt-out).
The Preparatory Committee formally adopted the Rules of Procedure, subject to inclusion of the fees rules and any technical amendments that might be needed, which once concluded, will be published on the UPC website.
Please click here to view the adopted Rules of Procedure.
Many administrative decisions (for instance on the IT-system) still remain outstanding.
It is currently understood that the Unified Patent Court will begin work in spring 2017.
By Professor Dr. Winfried Tilman, Of Counsel at Hogan Lovells, Düsseldorf, Germany
(Member of the UPC Expert Group advising on the implementation of the UPC Project)