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Unified Patent Court

Learn about the current developments and future plans of the Unified Patent Court as it aims for operational readiness. Explore the economic effects, strategic considerations, impacts on patent attorneys, claimants, and defendants.

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Unified Patent Court

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  1. Unified Patent Court November 27, 2014 Dr. Eugen Popp LL.M.

  2. Unified Patent Court • 1. Present Status • 2.Economic Effects • 3.Stratetic Cosiderations • 4.Impact on Patent Attorneys • 5.Impact on Claimants and Defendants

  3. Unified Patent Court-Present Status • The UPC-Agreement (UPCA) was signed on 19 Feb. 2013 by 25 EU-Member States • (except Spain and Poland;Croatia was at that time not a EU Member State); • The UPC will have a Central Division in Paris with branch sections in London (human necessities;drugs) and Munich (mechanical engineering) and Local/Regional Divisions. • Three Committees have to be constituted „to ensure effective operation and implementation“ of the UPCA,namely the • - Adminstrative Committee • - Budget Committee • - Advisory Committee. • For the preparation of the start of the UPC, a • - Preparatory Committee (PreCom) • was established enabling entry into force when the required number of ratifications is reached.

  4. Unified Patent Court-Present Status • Further, a • -Select Committee • hasbeenestablishedwithinthe European Patent Office (EPO) taking care ofthe administrative dutieswheretheEPO is in charge. The PreparatoryCommitte (PreCom) will existuntilthe Court isestablished. TherearefivemajorworkstreamsestablishedwithinthePreparatoryCommittee: -Legal framework -Financial aspects -IT facilities -Human resources -Training. The statusofthisworkcanbemonitored on thewebpageofthePreCom.

  5. Unified Patent Court-Present Status The updated Roadmap of the Preparatory Committee (PreCom) of the Unified Patent Court dated September 2014 reflects the aim that the Court is to be ready for operation by end of 2015, under the condition that by then 13 EU Member States will have ratified the Unified Patent Court Agreement (UPCA) , incl. DE, GB and FR. Status of Ratification: Austria Aug. 6, 2013 Belgium June 6, 2014 Denmark June20,2014 France March 14,2014 Sweden June 5,2014

  6. Unified Patent Court-Present Status Overall Summary of work completed 2013/14: -PreCom received an expression of interest from about 1300 candidate judges ( both for legally and technically qualified judges) and organized a pre-selction process; -PreCom set out the basic principles for the framework for the training of candidate judges; 25 candidate judges from „non-patent“ member states have been invited for training, -Acc. to a first estimation about 70 1st-instance judges will be needed for the start, most of them part time; -PreCom opened the Training Centre for the Unified Patent Court in Budapest in March 2014; -PreCom published the 16th and 17th draft of the Rules of Procedure (RoP) for the Unified Patent Court; -PreCom commenced appointment of specialists in IT procurement to compile the necessary specification for a call for tender for the UPC‘s future electronic filing and case management; the first version of a UPC e-filing/case management system prototype has been made available in October under http://prototype.unified-patent-court.org/;

  7. Unified Patent Court-Present Status The IT-prototype can be accessed using the aforementioned link, and testers can supply feedback on any aspect of their experience using the „BugHerd“ feedback application on the right-hand toolbar. -PreCom agreed and circulated a recommendation for minimum specification for facilities arrangements; -PreCom and Member States agreed Croatia as observer to the Preparatory Committee; -PreCom and Member States announced the first Regional Division of the Unified Patent Court between -Estonia, -Latvia, -Lithuania, and -Sweden;

  8. Unified Patent Court-Present Status -Initiated an early discussion on the arrangements for the transition from the preparatory phase to the operational phase of the new Court. This will be discaussed throughout 2015; -Established an Expert Panel to advise the Chairman of the Preparatory Committee and the working group co-ordinators on developing strategies on the UPC. -Dr. Christof Keussen and Dr. Eugen Popp are members of this Expert Panel, which had its first meeting in London on Sept. 26, 2014. The next meeting will be in February 2015.

  9. Unified Patent Court-Present Status Status ofthe different Working Groups: a) Legal framework(coordinator: Mr. Johannes Karcher-Germany) End of November 2014: Public hearingconcerningthe Rules ofProcedure on the basisofthe 17th draftrules; a1) May 2015: Agreement on Rules ofProcedure in thePreparatoryCommittee a2) Court Feesandrecoverablecosts: A scaleofrecoverablecosts ( fixedfeeandvalue basedfeeabove a definedceilingofthefixedfee) shallbedicussed in thebeginning of 2015 andadoptedbymidof 2015; a3) Rules on theLitigationCertificatefor Patent Attorneysaretobefinalizedearly 2015

  10. Unified Patent Court-Present Status b) Financial aspects (coordinator: mr. Jean F. Magana- France) b1) Implementation of the budget, internal control and audit procedures are to be fina- lized by end of 2014; b2) Pension, social security and salary schemes: Draft is expected to be finalized by March 2015; b3) Forecast for the operational costs for the first 7 years of operation, incl. the necessary Court fees: Consultation planned in spring 2015. c) IT (coordinator: Mr. Neil Feinson (United Kingdom) The procurement process has already started and shall be finalized during the last quarter of 2015.

  11. Unified Patent Court-Economic Effects Patent Attorneys‘ Mantra: • What is good for inventors and industry, is good for the profession! • For more than 50 years industry, in particular SME-industry has emphazised that a community or unified patent system is needed, in order to - reduce the costs - increase efficiency - increase certainty - decrease complexity. • Correspondingly, the majority of the profession supported the establishment of a European Patent with Unitary Effect and Unified Patent Court (UPC)

  12. Unified Patent Court-Economic Effects • The questioniswhathavewegot, andwhathastobeconsidered? • The UPC will definitelyhavethefollowingbenefits: • Harmonizedjurisprudenceasregardstheinterpretationofsubstantive patent law in respecttoscopeofprotectionandvalidity (guaranteedbysingle Court of Appeal Costsavings due tosingleproceedingsfortheterritoryoftheparticipatingMember States • Costsavingsand high efficiency due toonlyoneadvocateoroneteamofadvocateson eachside • Costreductionthroughincreasedcompetitonamong Patent AttorneysandLawyers • Fast decisions due tostrictregimeoftimelimits, and in particularshorttimelimits

  13. Unified Patent Court-Economic Effects The UPC mayhavethefollowingdrawbacks: • Riskof all ornothing! • This appliesbothtoinfringementandvalidity • Remark: The riskof all ornothingcanonlybeavoidedbyopting-out pursuentto Art. 83(3) UPCA Art. 83(1) UPCA, whichallowsplaintifftostartinfringementactionorinvalidityactionbefore a national court, isnoescape, because counter- actioncanbestartedbefore UPC ,and national courtproceedingsmaybegovernedby UPCA • More complexsystemwithin Europe, sinceboth national patent lawand national Rules ofProcedure, and UPCA and UPC-Rules ofProcedurehavetobeconsidered • All theaboveandfurtherconsiderationshavetobemade in viewofstrength andvalueofeach patent/patent application

  14. Strategic Considerations: European Patents granted before enforcement ofUPCA Strong Patent? Crown Jewel? yes no no yes National Court (Opt-Out) Unified Patent Court Reduce Vulnerability Central Enforcement

  15. Strategic Considerations: European patents granted after enforcement of UPCA Crown Jewel? yes • 1 ReduceVulnerability • 2 Central Enforcement • 3 Saves Annual Fees • WithoutES andIT • x = numberofvalidations, • wherecostsfor uni- • tary patent same as • forclassical EP Strong Patent? Costsdecisive ? no no yes yes 1 2 3 Unitary Patent >xValida-tions? Validated EP (withOpt-Out) yes no 4

  16. Unified Patent Court-Economic Effects NoPain NoGain !

  17. Unitary Patent Court-Impact on Patent Attorneys PAINS • Lessvalidationwork, incl. administrative andtranslationwork • Lesscrossborderlitigationworkwithin Europe • Lesscrossborder legal advisorywork, sinceunitaryshouldbeunitary! • More European-widecompetitionwithrespecttolitigation GAINS • Additional litigationcompetence all over Europe, andcorrespondinglyexpandedbusiness • Nullityactionsbesideorinsteadofoppositions (twooptionsforcentralattack) • More sophisticated legal andstrategicadvisorywork ( national vs. unitary ) • National patents/utilitymodels vs. classic European patents vs. unitarypatents • Field ofcompetenceincreased, whichcannoteasilybegrazed down byserviceproviders • European-wideawarenessofpatents, andcorrespondingbusiness

  18. Unitary Patent Court-Impact on Claimants and Defendants Summary ofpro‘sandcon‘sofswitchto UPC asresultof a surveymadeby EUROPE ECONOMICS GainsforClaimants: Smallestgainswereexpectedtoarisefromcost-savingandeffectiveness Largestgainsexpectedtoarisefromsimplicityandspeedofdecision-making GainsforDefendants: Smallestgainsexpectedtoarisefromcostsavings Largestgainsexpectedtoarisefromsimplicity PainsforClaimants: Smallestexpectedpainsfromriskofinjunctiongap due tobifurcation Largestexpectedpainswerethoseassociatedwith lack offamiliaritywiththeproceduresofthenewsystemandaboutcosts PainsfortheDefendants: Smallestpainsfrominconvenienceandcomplexity Largestpainsfromuncertaintyandfromriskofthird-party obtaining an injunctionbeforerulings on validity

  19. Thank you for your Attention!

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