AIPLA Annual Meeting 2014What speaks in favour ofOpting-out?

Dr. Jochen Pagenberg Attorney-at-law, MunichPast President EPLAW

Prinzregentenplatz 781675 Munich

T +49(0)89.928 05-0pagenberg@bardehle.d

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My answer: Everything, but above all:

I. The quality of judges is today unknown

Political promise:“UPC system must not be less efficient and of lower quality than the best national systems”

Unanimous support by the members of the EU

Commission’s Expert Committee

Bardehle Pagenberg 20.04.23 3

II. Legal Rules first approved

Art. 15 UPC- Eligibility criteria for the appointment of judges

(1) [..] Judges shall ensure the highest standards of competence and … have proven experience in …. patent litigation.

What was later changed by politicians behind closed doors can be found in the UPC Statute

Art. 2 Eligibility of judges

(3) Experience with patent litigation which has to be proven for the appointment pursuant to Art. 15 (1) of the Agreement may be acquired by training under Article 11(4)(a) of this Statute .[Highest proven experience in class?]

UPC Statute Art. 11 Training

(2) The training framework shall provide (a) … organising courses, conferences, seminars, workshops and symposia

[missing: working as a judge and deciding cases]

Art. 11 Training

(4) The training framework shall in addition: (a) ensure appropriate trai-ning for candidate-judges and newly appointed judges of the Court[Candidate-judges and newly appointed judges certainly need training, but what has this to do with proven experience which judges should possess as a condition for recruitment?]

Can “[theoretical] training” beregarded as equivalent to

“proven experience in the field of patent litigation” ?

Explanation from Brussels:

„The reason is geographical diversity - it is a political decision“

Among the 24 participating member states there are 14 whose courts have less than 10 patent cases per year; and a handful of them have not even had one single patent case at all.

III. Views of Stakeholders

Did the politicians know – and care (!) - about the importance of quality and experience of the judges for the success of the whole system?

Results of an Academic Survey among prospective users:

Q: What do you regard as the most important feature of the UPC?

No.1 Answer by Stakeholders*qualityexperience, and predictability of decisions*Dr. Luke McDonagh, Cardiff Univ., Exploring Perspectives of the

Unified Patent Court and Unitary Patent Within the Business and Legal

Communities

Citations of Answers in the Survey

“The crucial thing the planners must do is to set up a high quality system of decision-making”

“It is crucial that potential users of the court perceive the UPC as being a venue for high quality and consistent decision-making”

“All said that policy-makers must take the issues of judicial composition and quality very seriously”

And what do policy-makers do?

They disregard the legal condition of highest standards of competence and proven experience in the field of patent litigation and replace it by broad geographical diversity

and thereby weaken the system at its most sensitive point

IV Uncertainties and risk-taking

For the Opt-out decision much will depend on Cost which will not be known before 2015

Annuities vs. users choice

= 3 countries - 50%

= 4 countries - 25%

= 5 countries - 12%

Surveys show that Opt-out will depend on a very subjective decision by weighing feelings of uncertainty against optimistic testing and risk-taking

The problem will be the time factor: it will take long before users can take decisions on a well-founded evaluation of facts and own experience. This will remain a problem for some time.

V. Future Improvement by way of the Revision Clause of Art. 87?

Art. 87 UPC Revision

After seven years and after a broad consultation with the users shall be carried out… on the functioning, efficiency and cost-effectiveness of the Court, and on the trust and confidence of users of the patent system in the quality of the Court's decisions..

My Ceterum Censeo

The severe mistake which the EU Commission (and the EU Council) made was the refusal

to include an unlimited option for EP patents to either use the UPC or the national courts

It would have avoided a lot of trouble

- it would have allowed for a full EU integration of the Patent Package by way of a EU Regulation comparable to the Community trademark system

- it would have rendered the complicated opt-out/opt-in system superfluous, since all 500.000 to 600.000 earlier filed EP patents would have remained in the “basket” as a permanent reserve for litigation

- it would have avoided the serious and also unpredictable risk that in particular large companies will opt-out the majority of their patents so that the UPC will receive a very low number of cases in the first seven years

- it would have allowed SMEs to continue filing and enforcing EP patents in the future instead of going back to national offices for cost reasons

THANK YOU

FOR YOUR ATTENTION