This is based on a talk given by Kevin Mooney to the CIPA
Life Sciences Conference on 14 November 2013.
1. The European
unitary patent has come about in response to the perception that diverse
litigation systems across Europe are a problem.
There are significant difference in procedure (e.g. the extent of
reliance on expert witnesses) and in the speed and costs of the different
systems. The quest for unitary patent system
started in 1975 with the Community Patent Convention.
2. The objectives of
the new system are a single patent, a single litigation procedure with experienced
judges, quality, efficiency and legal certainty. One incentive to use the new procedure will
probably be reduced costs due to reduced renewal fees, although this is not straightforward
as under the present ‘bundle of patents’ system renewal costs can be decreased
in later years by reduction of designations (which won’t be possible with the
unitary patent).
3. The Unified Patent
Court (UPC) will have local, regional and central divisions. This gives a plaintiff lots of places to
sue. The language will also be chosen by
the plaintiff though there provisions for language to be the one in which the defendant
normally conducts business.
4. We are now at the 15th
draft of the rules of procedure [In fact subsequent to this talk we are now at
the 16th draft]. The
litigation procedure has 3 parts:
- a written part lasting 6 months (claims, counterclaims, applications to amend
the patent, etc)
- an interim procedure lasting 3 months, where the
judge-rapporteur is essentially preparing the case for a oral hearing
- the oral hearing, typically lasting 1 day.
5. The appeal will
not be a retrial and normally no new evidence will be submitted.
6. The Court will
have a broad discretion as to whether to bifurcate at end of the written procedure.
Bifurcation is expected to be rare. The
Court will have the discretion to stay infringement proceedings if it decides
to bifurcate and the expectation is that they would stay.
7. The conditions for
provisional measures (injunctions, etc) are that the applicant is entitled to
commence proceedings, the patent is valid and the right has been infringed. In addition the Court must weigh up the interests
of parties. There is also a provision
for compensation of defendants if the provisional measure was incorrectly
granted.
8. At the moment
there is discussion of whether to charge for opting out of the unitary patent
(back to the present ‘bundle of patent’ system). The pharma and biotech sectors have indicated
they would opt out since the new system is untried.
9. For the litigation
there is a fixed fee for each part, and a controversial value-based fee for counterclaims
for revocation.
10. Representation is
a much discussed point. Lawyers or
patent attorney will have representation rights and these are being defined
very broadly.
You may also wish to see related articles 10
Observations on Patent Litigation and 8
Disadvantages of a Specialist Patent Court.
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