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8 September 2013Patents

AIPPI 2013: Stumbling blocks in the Unified Patent Court proposals

Lawyers and judges practising in Europe have expressed concerns over certain aspects of the proposed Unified Patent Court (UPC).

During the International Association for the Protection of Intellectual Property (AIPPI) meeting in Helsinki, Finland, the UPC's finer details and potential drawbacks were discussed, with concerns raised about how effective litigation will be under the system.

The UPC will hear cases regarding infringement and revocation of valid Unitary patents (a new patent) in the territories of its 25 participating EU member states.

If established, the UPC is expected to eliminate the need for separate litigation covering the infringement of European patents (which it will also adjudicate on) in individual member states.

The court will consist of a Court of First Instance, with its main bases in Paris, Munich and London, a Court of Appeal as well as local and regional divisions.

At the head of concerns is the language barrier when taking into account the numerous local and regional divisions.

Making reference to article 33(2) of the UPC agreement, Rainer Hilli, managing partner of law firm Roschier in Helsinki, Finland, said its ruling on location for pending litigation in regional divisions could cause problems.

According to the article, “if an infringement action is pending before a regional division and the infringement has occurred in the territories of three or more regional divisions, the regional division concerned shall, at the request of the defendant, refer the case to the central division”.

“This is a real threat,” said Hilli. “The defendant, in many cases will be able to have a court case transferred. Will they [regional divisions] survive this? I don’t understand why this provision exists.”

Kevin Mooney, partner at law firm Simmons & Simmons in London, added that despite the UPC’s intention of increasing homogenisation, language barriers could still be a problem.

He referred to article 42 of the UPC agreement, which states that if a regional division has more than one language, proceedings should be undertaken in the language in which the division “normally conducts its business”.

Indicating he would like to see the rule disappear, Mooney said: “How on earth do you decide that? A country such as Belgium has more than one language and it makes it very difficult to determine how business is usually done.”

Klaus Grabinski, a judge at the German Federal Court of Justice in Germany, indicated the importance of finding adequate judges to oversee proceedings once the system has been agreed. “Judges will have to be identified and there will be an expert committee to find out which need some more training. But training alone is not good enough; the best way to learn is through experience on the job,” Grabinski said.

The UPC agreement will come into force once 13 member states, including the UK, France, Germany, formally ratify it.

Last month, Austria became the first country to do so.

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