11 March 2014

Update to UPC rules clarifies “opt-out” scheme

The Unified Patent Court (UPC) has clarified its opt-out scheme, making clear that when a European patent has been opted out of the scheme, its associated supplementary protection certificate (SPC) will follow.

The UPC preparatory committee published its  16th draft of the court’s rules of procedure on March 6, taking into account comments received by the committee from practitioners and the industry between June and October last year.

It said the draft is intended for information only, and is not a call for a further round of written comments, although it added that any remarks may be submitted at an oral hearing later this year.

Its legal group will now examine the new draft set of rules “at the level of participating EU member states”, it said.

Paul England, a senior partner at Taylor Wessing LLP in London, said the manner of application of the opt-out to SPCs had been a “very large area of uncertainty”, and that the 16th draft rules have filled in or clarified most of the important issues.

However, he added: “As with any rules, it will be possible to find lacunae – ‘but, what if…?’ scenarios – for a long time to come.”

Language remains an area of great difficulty, he said: “The drafting committee has been unable to decide on a rule for statements of claim. It is now becoming likely that a simple rule of claimant’s choice will have to prevail, but there will be concern that this will prejudice defendants.”

England also noted that the addition of security for costs provisions may deter patent assertion entities.

According to the new rules on preliminary injunctive relief, the UPC is now required to have regard to unreasonable delay, and take into account the potential harm caused to either party by the grant, or refusal to grant, injunctions.

England said this was unexpected: “It suggests that balance of convenience considerations, familiar in the English courts, are intended to carry more weight than the merits at the provisional stage.”

London-based Bristows partner Alan Johnson, in his rundown of the draft’s highlights, agreed that the language regime remains uncertain, and added that the scope of preliminary objections is “still very limited”.

He noted that no “substantive change” was made to the rule concerning bifurcation, and that despite much lobbying from the industry, there was no guidance included in the new draft rules.

The committee still cannot agree on the right of the Court of Appeal to grant leave to appeal procedural matters including decisions to bifurcate, he added.

“The Court of Appeal will have to resolve this,” he said.

Hosea Haag, a patent attorney from Ampersand in Munich, said that from a first look at the 16thdraft and digest of the comments received “a very good job was done”.

However, “as with all procedural rules… the judges will have to fill the gaps the lawmaker left,” he added.

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