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Update: 7 Important changes in the 17th draft of the rules of procedure of the unified patent court

29 November 2014

The 17th Draft of the Rules of Procedure of the Unified Patent Court was recently published and a marked up version can be found here. The Oral Hearing in respect of this new draft was held on 26 November 2014 at the Academy of European Law in Trier. We highlight below 7 of the most important changes brought by this new draft.

1. Permanence of opt-out/in bar: Rules 5.7 and 5.9 RoP have been amended to clarify that the bar on opting out/in is effective if an action has been commenced before a court of the UPC/Contracting Member State, “irrespective of whether the action is pending or has been concluded”. Accordingly, once an action has been commenced in the UPC, it will not be possible to opt-out the patent from the jurisdiction of the UPC, irrespective of the current state of that action (pending or concluded). Similarly, if an action has been commenced in a national court in respect of a patent that has been opted out, it will be impossible to withdraw the opt-out (i.e. to opt-in).
2. Mitigation of the negative effects of bifurcation: New Rule 37.5 RoP requires that when a regional/local division decides to bifurcate, they must communicate to the central division the dates set for the case management conference and the oral hearing in the infringement case. New Rule 40 requires that the central division “endeavours to set a date for the oral hearing on the revocation action prior to the date of the oral hearing of the infringement action”. While this does not remove the possibility of bifurcation, it reduces the risk of negative effects arising from the period between a patent being considered infringed and the time when the matter of its validity is considered (known in Europe as the “injunction gap”).
3. Removal of the concept of innocent infringers: Previous versions of the Rules include Rule 118.2 RoP, which provided the Court with the ability to order damages and/or compensation instead of an injunction in the case of an infringer that acted “unintentionally and without negligence”. The reason given for removing this rule is that “[i]t was felt that such a scenario would be difficult to imagine in particular where an infringer acted not only unintentionally but also without any negligence and that therefore the provision could in practice hardly apply”.
4. Security for costs and compensation in special circumstances: Rule 196.6 RoP has been amended to state that the Court will order security for costs and compensation where an order to preserve evidence has been made without the defendant having been heard “unless there are special circumstances not to do so”. Similarly, Rule 211.5 RoP has been amended to state that the Court will order security for costs and compensation where an order for provisional measures has been made without the defendant having been heard “unless there are special circumstances not to do so”. As an example of such special circumstances, the drafting committee referred to situations in which “no damage can occur or only a sample of an inexpensive mass-product is sought”.
5. Leave to appeal certain decision: Rule 220.2 RoP has been amended to clarify that leave to appeal certain privileged orders of the Court (as opposed to a decision on the merits of a case) must be first sought by the Court of first instance and, if refused by the Court of first instance, leave to appeal can then be sought from the Court of Appeal within 15 days of the Court of first instance’s refusal. The previous version of this rule referred only to “the Court”, and it was considered unclear whether the rule was referring to the Court of first instance or the Court of Appeal. This is an important amendment in terms of helping to prevent divergent practices in different local divisions.
6. Public inspection of the Register and confidential information: Rule 262.1 RoP has been amended to allow a party to request that some material submitted during proceedings remains confidential, provided that the party submits a redacted copy of the document when making the request.
7. Expansion of the definition of a lawyer and privilege for patent attorneys: Rule 286.1 RoP has been amended to widen the definition of a “lawyer” to include not only lawyers under a title referred to in EU legislation, but also “by way of exception a person with equivalent legal professional qualifications who, owing to national rules, is permitted to practice in patent infringement and invalidity litigation but not under such title”. While the scope of this new wording remains somewhat unclear, it does seem clear that this is a broadening of the definition of a “lawyer”, and it could be argued that most UK Chartered Patent Attorneys (CPAs) would be considered as “lawyers” under the new rule, and would therefore have inherent rights of advocacy before the UPC (as most CPAs have litigation rights before the UK’s Intellectual Property Enterprise Court). Finally, in conjunction with the above amendment, Rule 287.2 RoP has been amended to clarify that privilege extends to all patent attorneys (i.e. including national patent attorneys of European countries who are not qualified as European Patent Attorneys).

Denis Keseris
Electronics, Computing & Physics Group

If you require further information on anything covered in this briefing, please contact Denis Keseris (dkeseris@withersrogers.com; +44 207 940 3600) or your usual contact at the firm.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, November 2014