Unitary Patent and Unified Patent Court

Spring International Conference | May 2-4, 2016

LISBON

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The European Unitary Patent and Unified Patent Court

Jill Bainbridge

What is a Unitary Patent?

•  The Unitary Patent is a shorthand term for a “ European patent with unitary effect

•  It will be a European patent granted for the territories of a number of EU member states as though they were a single country.

•  The patent will provide uniform protection and have equal effect in all those states.

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How does this differ from European Patent?

•  This is granted by the EPO under the European Patent Convention

•  Patents are granted for individual countries that are party to the EPC

•  European patents are enforced in the courts of the individual member states

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Which states will be covered?

•  They must include France, Germany and the United Kingdom and at least 10 other Member States of the EU.

•  So far Austria Belgium, Denmark, Finland, France, Luxembourg, Malta, Portugal and Sweden have indicated they wish to participate.

•  Potentially every EU member state can join in and 25 of the 28 states have indicated a willingness to join by signing an agreement for a Unified Patent Court

What has prompted the Unitary Patent?

•  Cost and inconvenience of protecting inventions in the EU

•  The possibility of a unified court with specialist divisions

•  National laws will still be relevant e.g. threats actions

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The Unified Patent Court

•  This will settle disputes relating to unitary and other European patents

•  It is not an EU institution or a national court but a self-contained legal system consisting of a Court of Appeal and a Court of First Instance with its own substantive and procedural law

•  Judges and the Registrar shall be independent and will include legally qualified and technically qualified members

•  Judges to be trained at the Judicial Training Centre in Budapest

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Court of First Instance

•  Comprises a central division as well as local and regional divisions

•  Central Division shall have its seat in Paris with sections in London and Munich

•  Cases to be distributed amongst those sections according to specialism

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London

•  Human necessities •  Chemistry

•  metallurgy

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Paris

•  Performing operations •  Transporting

•  Textiles

•  Paper

•  Fixed constructions

•  Physics

•  electricity

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Munich

•  Mechanical Engineering •  Lighting

•  Heating

•  Weapons

•  blasting

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Local divisions

•  A local division may be set up by a Contracting Member State upon request

•  Up to 4 local divisions per state on request for every 100 patent cases per calendar year that have been commence in that state during the 3 successive years before or after the UPC Agreement comes into force

•  Austria, Belgium, Denmark, Holland, Finland, France, Germany, Ireland and UK all indicate they will apply for local divisions

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Regional division

•  Sweden, Estonia, Latvia and Lithuania have expressed a desire to set up a regional division for their states in Stockholm which will adopt the English language

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Court of Appeal and Registry

•  Located in Luxembourg •  Sub registries to be set up in the central and each local

and regional division

•  Registry to keep records of all cases before the court

•  Appeal against decision of Court of First Instance may be brought before Court of Appeal by any unsuccessful party in whole or in part, within 2 months of the date of the notification of the decision

•  Appeals against interlocutory decisions to be made within 15 days of date of notification of decision

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Issuing Proceedings

•  Infringement actions to be brought in the division where the infringement takes place or is threatened or where the defendant or one of them is located

•  If no local connection can be brought in central division

•  Claims for declarations of non-infringement or revocation of a unitary patent may be brought in the central division unless linked to infringement claim

•  Lodge pleading in electronic form

•  Proposed issue fee for infringement claims €11,000 but also provision for a sliding scale of nothing fro claims up to €250,000 to €220,000 for claims over €30million

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Costs recovery and Mediation

•  Cap on recoverable costs

•  Mediation to be provided for and will be 2 mediation centres – Lisbon and Ljubljana

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UK Court – Aldgate Tower

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Rowedder Zimmermann Hass 20

UPC ante portas -

Developments in Germany

André Haug Rechtsanwalt

Rowedder Zimmermann Hass Augustaanlage 59, 68165 Mannheim / Germany

[email protected]

International Conference Lisbon May 2016

IP/IT Specialty Group Meeting

R O W E D D E R Z I M M E R M A N N H A S S R E C H T S A N W Ä L T E


UPC ante portas

I.  Ratification

UPC agreement has to be ratified by at least 13 member states and amongst them mandatory GB, F and D.

Germany reluctant, rumours said Government wanted to wait until the necessary number of ratifications is achieved to hold all the aces regarding the pending issues, e.g. selection of judges, fees, rules of procedure etc.

Now as these issues – more or less – are dealt with, the Federal Ministry of Justice in February 2016 set up a first draft („Referentenentwurf“) for an implementation act. Stakeholders can now give statements to that and then there will be a first reading in parliament („Deutsche Bundestag“) this summer.


UPC ante portas

II.  Local divisions

Court of First Instance consists of

- central divison (Paris, London, Munich)

- regional divisions (e.g. „North Baltic Regional Division for Estonia, Lithuania, Latvia and Sweden)

- local divisions


UPC ante portas

The Munich section of the central divison is competent on

mechanical engineering, lighting, heating, weapons, blasting

will be located in

Cincinnatistr. 64, 81549 Munich

Location of the Federal Patent Court („Bundespatentgericht“)


UPC ante portas

4 local divisions:

- Mannheim: Schubertstr. 11, 68165 Mannheim (in the building of the Higher Administrative Court („Verwaltungsgerichtshof“)

- Düsseldorf: Cecilienallee 3, 40474 Düsseldorf (in the building of the Higher Regional Court („Oberlandesgericht“)


UPC ante portas

-  München: Schleißheimerstr. 141, 80097 Munich (in the building of the Labour Court („Arbeitsgericht“)

-  Hamburg: Sievekingplatz 1, 20355 Hamburg (in the building of the Higher Regional Court („Oberlandesgericht“)


UPC ante portas

III. Judges

Good news: nearly all the highly qualified judges of the patent infringement courts in Germany, esp. from the courts of Düsseldorf, Mannheim, Munich and the Federal Court in Karlsruhe applied for being a UPC judge as well.

In the first years „part time“ judge at the UPC and the German court. Still a problem with the German civil service law.

Due to the number of cases (more than 50 a year) all the German local divisions will start with 2 local judges and one from abroad.


R O W E D D E R Z I M M E R M A N N H A S S R E C H T S A N W Ä L T E

Augustaanlage 59 | 68165 Mannheim Telefon: 0621 41938-0 | www.rowedder.de

TAGLAW Spring Conference May 2016 IP/IT Speciality Group Meeting

The implementation in Belgium of

the Unitary Patent Protection

Lutgarde Eraly Marx Van Ranst Vermeersch & Partners

Tervurenlaan 270 1150 Brussels

[email protected]

I. RATIFICATION

§  The UPC Agreement (UPCA) was signed by 25 EU Member

States on 19 February 2013. §  It will need to be ratified by at least 13 Member states,

including France, Germany and the United Kingdom to enter into force.

§  Belgium ratified on 6 June 2014, as fourth, the UPC

Agreement.

II. IMPLEMENTATION OF THE UPP IN BELGIUM

§  Provisions in Book I and Book XI of the recently

coordinated Code of Economic Law.

§  Legislative proposals. §  Decision of the Council of Ministers of 24 May 2013 to have

a local division of the Unified Patent Court in Brussels which will operate in four procedural languages.

II. A. IMPLEMENTATION – BELGIAN CODE OF ECONOMIC LAW

§  Book I of the Code of Economic Law (Wetboek Economisch

Recht/ Code de droit écononomique): Chapter 9: “Definitions”: Article I.14, 13°, 14°, 16°.

§  Article I.14 already entered into force on 22 September 2014.

§  Book XI: “Intellectual property rights”: Article XI.83 § 5

and § 6. §  Provisions of Book XI entered into force on 1 January 2015.

II. B IMPLEMENTATION – DRAFT LEGISLATION

§  Preparation of legislation to bring relevant provisions of the

Code of Economic Law in accordance with the substantive provisions of the UPCA.

§  Proposal to foresee in a “safety net”.

II. C. IMPLEMENTATION: LOCAL DIVISION IN BRUSSELS

§  Location: likely to be located in the offices of the Federal Public Service of Economy (City Atrium C, Vooruitgangstraat 50 / Rue du Progrès, 50, 1210 Brussels)

II. C. IMPLEMENTATION: LOCAL DIVISION IN BRUSSELS

§  Three judges: one national judge and two judges of a different nationality (due to the low number of cases: less than 50 a year (art. 8 UPCA))

§  Four procedural languages: Dutch, French, German and

English

For further contact:

[email protected] Marx Van Ranst Vermeersch & Partners°

Tervurenlaan 270 Av. de Tervueren Brussel 1150 Bruxelles

T +32 2 285 01 00 – F +32 2 230 33 39 www.mvvp.be