Revised draft Rules of Procedure for the Unified Patent Court ("UPC") were published on 31 October 2014. A public hearing on this the 17th draft is scheduled to take place on 26 November 2014 in Trier, Germany.
The latest draft of the Rules includes a number of key amendments including changes relating to opt-in mechanisms, bifurcation, permanent injunctions, appeals, languages and security. Of these, the most interesting amendments of practical relevance relate to opt-out / opt-in mechanisms and bifurcation.
Opt-out (and opt-in) mechanisms
It is intended that proceedings concerning Unitary Patents and European Patents may be brought before the UPC (although proceedings concerning European Patents may alternatively be brought before national courts for a transitional period of seven years). This means that patent owners will have a choice of where to bring proceedings concerning European patents during the transitional period. In addition, patent owners may under the proposed Rules of Procedure "opt-out" a European Patent from the UPC so that all future proceedings will be brought before national courts.
The provisions for opting-out under the 16th draft of the Rules raised a number of questions for patent holders concerning the timing of opt-outs and whether opting out was possible if there was already a patent action pending before the UPC.
The 17th draft of the Rules makes clear that opting-out is not possible if there is an action pending before the UPC (or if there was an action pending and that action has been concluded). Thus, an action brought to the UPC constitutes an absolute bar to an application to opt-out. This amendment to the draft Rules will reduce the risk that the UPC and national courts deal one after the other with the same European Patent and reach diverging decisions.
Further, once a decision to opt-out has been made by a patent holder and an action has been brought before a national court concerning that patent (whether the action is pending or concluded), it will not be possible to withdraw the decision to opt-out (and opt back in to the UPC). Any future action concerning that patent will need to be heard by the national court, not the UPC. Again, the amendment is intended to reduce the risk of diverging decisions. However, an opt-out in relation to a European Patent which is not the subject of an action (pending or concluded) before a national court may be withdrawn by the patent owner during the transitional period.
The fees for opting-out are not yet known and therefore the practical implications of opting out or applying for national rather than European Patents are still not clear.
Bifurcation
While the Unified Patent Court Agreement envisaged a bifurcation
of validity and infringement issues (with perhaps a counterclaim
for revocation referred to the Central Division of the UPC and the
infringement action being dealt with by the Regional Division, the
amended Rules provide that the proceedings before the Central
Division may be accelerated in order that the revocation claim
might be heard prior to the infringement hearing. Synchronisation
of division calendars will however remain at the discretion of the
judge and it is not the case that all Central Division proceedings
will be accelerated. As a result of the amendment, the risk of
bifurcation is less of an issue because revocation should be
addressed before infringement is heard by the court.
The proposals in general do little to indicate that 2017 remains a
realistic start date for the UPC.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
