Patent Disputes in Europe : a Federal Patent Court for Europe? The Agreement on a Unified Patent Court [UPC] of February 19, 2013 and Rules of Procedure of the UPC [15th draft dated May 31, 2013]

1. Patent Disputes in Europe : a
Federal Patent Court for Europe?
The Agreement on a Unified Patent Court [UPC] of February 19,
2013 and Rules of Procedure of the UPC [15th draft dated May 31,
2013]

2. The Agreement on a Unified Patent Court [UPC] and Rules
of Procedure of the UPC [15th draft of 31 May 2013]
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 The Agreement signed 19 February 2013 must now be ratified by the
required number of member States, namely 13.
 The Public Consultation period for making submissions in relation to
the draft Rules closed on 1 October 2013.
 The final version of the Rules of Procedure is scheduled for May 2014.
 The target start up date for the Court is 2015, but most commentators
regard that as over optimistic.
 25 EU Member States were party to the Agreement. Italy and Spain
are not signatories.
* A long gestation period:
December 1975 : first Community Patent Convention
March 2000 : new Community Patent and litigation system
proposed.

3. Structure of the Court (1)
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• The Court shall comprise a Court of First Instance, a Court of Appeal and a Registry.
The Court of Appeal and Registry will be located in Luxembourg: Art. 6(1).
• The Court of First Instance shall comprise a Central Division as well as Local and
Regional Divisions: Art. 7(1).
• The Central Division shall be located in Paris with sections in London and Munich:
Art.7(3)
o The London section shall hear cases relating to Human Necessities (e.g. Life
Sciences and Pharmaceuticals), Chemistry and Metallurgy: Annex II
o The Munich section shall hear cases relating to Mechanical Engineering,
Lighting, Heating, Weapons and Blasting: Annex II
o The Paris seat shall ear cases relating to Electricity (e.g. electronics and
telecoms), Physics, Transport, Textiles / Paper and Fixed Constructions: Annex
II.
• Central Division : 2 legal judges from different Contracting States and 1 technical
judge: Art. 8(2).
• Court of Appeal : 3 legal judges and 2 technical judges: Art. 9.

4. Structure of the Court (2)
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• Local Division with <50 cases per year in the 3 successive years
preceding the start up of the court: 1 national + 2 non-national judges:
Art. 8(2).
• Local Division with >50 cases per year in the same 3 year period: 2
national + 1 non-national judge [France, Germany, The Netherlands
and the United Kingdom will qualify]: Art. 8(3).
• An additional Local Division for every 100 cases per year in the same 3
year period in a Contracting State, up to a maximum of 4 Local
Divisions in one Contracting State [Germany is expected to have 3
Local Divisions]: Art. 7(4).
• Regional Divisions comprising 2 or more Member States: 2 nationals
from regional states + 1 non-national judges: Art. 8(4).
• An additional technical judge will be appointed if requested: Art. 8(5).
• The parties can elect to have a single judge: Art. 8(7).

5. Competence of the Court : Art. 32
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Subject to transitional opt out under Art. 83, the Court shall have exclusive
jurisdiction for:
• Infringement (or threatened infringement) of patents and SPCs and
related defences, including counterclaims concerning licenses.
• Actions for Declarations of non-infringement of patents and SPCs.
• Actions for provisional and protective measures and injunctions.
• Actions for Revocation of patents and for Declaration of invalidity of
SPCs.
• Counterclaims for the same.
• Actions for damages or compensation derived from the provisional
protection conferred by a published EP application.
• Actions relating to prior use of an invention.
• Actions for compensation for licenses of right on the basis of Art. 8 of
Regulation (EU) No. 1257/2012.
• Actions concerning decisions of the EPO in carrying out the tasks
referred to in Art. 9 of the same Regulation.

6. Jurisdiction (1) Forum Shopping
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Infringement Proceedings may be brought in the
• Local or Regional Division where the infringement occurred: Art.
33(1)(a); or
• Local or Regional Division where Defendant (or one of them) is
resident or has its principal place of business: Art. 33(1)(b); or
• Central Division if Defendant is domiciled outside the EU.
Proceedings for Revocation or Declaration of Non-Infringement
may be brought in the
• Central Division; or
• the Local / Regional Division where existing infringement
proceedings are pending: Art. 33(4)
Parties’ Choice : Art. 33(7)
• Parties may agree upon a Division, including the central Division.

7. Jurisdiction (2) : Bifurcation - Stays
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• Where a Counterclaim for invalidity is brought in an Infringement action, the
Local or Regional Court may
- proceed to hear both infringement and validity and request 1 additional
technical judge from the Pool: Art. 33(3)(a); or
- refer validity to the Central Division and either stay or proceed with the
infringement case: Art. 33(3)(b); or
- with both parties’ consent, refer the entire case to the Central Division.
• Where a revocation / nullity action is pending before the Central Division, per
Art. 33(5) an infringement action between the same parties may be brought
before
- the Local or Regional Division where the infringement occurred; or
- the Local or Regional Division where Defendant is resident / has its
principal place of business; or
- the Central Division
• In such a case the Local or Regional Division has the discretion to proceed as
above.

8. Jurisdiction (3) Bifurcation : Stays
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• The decision as to whether or not to bifurcate shall be taken after
the closure of the Written Procedure, and the parties shall be given
an opportunity to be heard: Rule 37(1).
• Where the Local / Regional Court decides to refer validity to the
Central Division, the Local / Regional Court may stay the
infringement case pending the decision on validity by the Central
Court and must stay
“... where there is a high likelihood that the relevant claims of
the patent will be held to be invalid on any grounds by the final
decision in the revocation procedure” : Rule. 37(4).

9. Languages
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First Instance
• The official language of the Local Division: Art. 49(1)
• One of the designated languages of a Regional Division: Art. 49(1)
• Where a Contracting Member State hosting a Local Division or a Contracting
Member State hosting a Regional Division has designated two or more languages,
the Statement of Claim shall be drawn up in the language in which Defendant
normally conducts business in its Contracting Member State: Rule 14(2).
• Divisions may designate one or more EPO languages as an additional language: Art.
49(2).
• If the parties agree or the Court orders, the language of grant: Art. 49(3) – (5)
Central Division
• Language of grant: Art. 49(6)
Court of Appeal
• Language of the Court of First Instance: Art. 50(1);or
• If the parties agree, the language of grant: Art. 50(2); or
• Exceptionally, with the consent of the parties, the CoA may designate another
language: Art. 50(3).

10. Who may sue : Art. 47
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• The Proprietor.
• An exclusive licensee, unless the License Agreement provides
otherwise.
• A non-exclusive license, if the License Agreement so provides and
the Proprietor is given prior notice.
• Where an action is brought by a Licensee, the Proprietor is entitled
to join the action.
• Where a Defendant in an infringement action brought by a Licensee
wishes to Counterclaim to revoke the patent, the Defendant must
join the Proprietor.

11. Appeals : Art. 73
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• Appeals may be brought as of right in relation to
- final decision of the Court of First Instance
- decisions terminating proceedings against one party, and
- decisions in relation to provisional measures*
within 2 months from the date of the above decisions
• Appeals from Procedural Orders of the Court of First Instance may
only be brought with leave of the Court of Appeal.
• Appeals do not constitute a re-hearing.
• New evidence is permitted to be introduced only if highly relevant
and could not have been made before the Court of First Instance:
Rule 222.
* Provisional Measures include Decisions to conduct the proceeding in the language of
the grant of the patent (Art. 49(5)): Order to produce evidence (Art., 59): Order to preserve
evidence and to inspect premises / Saisie (Art. 60): Freezing Orders (Art. 61): Provisional
and protective measures / Preliminary Injunctions (Art. 52); and Power to order the
communication of information (e.g. origin of the infringing products) (Art. 67).

12. Representation Art. 48 and Rules 285 - 293
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• Lawyers authorised to practice before a court of a Contracting
Member State: Art. 48(1).
• A European Patent Attorney who has a European Patent Litigation
Certificate.
• The requirements for obtaining such Certificate are to be established
by the Administrative Committee: Art.48(2) – (3).
• Lawyers may be assisted by EPAs, who may speak at hearings at
the discretion of the Court: Art. 48(4) and Rule 293.
• Lawyers and EPAs shall enjoy Litigation Privilege: Art. 48(5) and
Rule 288.
This privilege extends to communications with a client in the
context of proceedings before the EPO
• “Lawyer” and “Patent Attorney” are widely defined and can include
in-house counsel / patent attorneys and overseas lawyers: Rule
287(6) – (7).

13. The Mediation and Arbitration Centre – Art. 35 and Rule
332(e)
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• The Centre shall be established with seats in Ljubljana and Lisbon.
• But, a patent may not be revoked or limited in mediation or
arbitration proceedings.
• The Judge-Rapporteur shall, as part of his case management
duties, encourage parties to make use of the Centre.

14. The Opt Out (1) : Art. 83 & Rule 5
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• Notwithstanding the exclusive jurisdiction of the UPC, during a
transitional period of 7 years after the date of entry into force of the
UPC Agreement infringement and revocation proceedings may be
brought before a National Court of a Contracting State designated
by the Patent if the Proprietor notifies an opt-out to the Registry.
• The opt-out is not possible where such an infringement or
revocation action has already been brought before the UPC.
• A Proprietor who has elected to opt-out may subsequently withdraw
that election.
• Such opting into the UPC is not, however, possible where the
infringement of revocation action has already been brought before a
National Court.
• After such notice of withdrawal a Proprietor cannot opt-out for a
second time: Rule 5(7).
• The opt-out applies to all Contracting Member States

15. The Opt Out (2) : Art. 83 & Rule 5
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• Fees – yet to be established – will apply for opting out and
withdrawing such opt-out.
• Note that 2 EU Member States, Italy and Spain, have not signed the
UPC Agreement, so that infringement / revocation actions in those
countries will not be within the exclusive jurisdiction of the EPC.
• Note also that infringement / revocation of EPs designating
Contracting States outside the EU will continue to be brought before
the respective National Courts of those States.
• At the end of the 7 year transitional period, the Administrative
Committee may decide to extend the opt-out possibility for up to a
further 7 years.

16. Amending a Unitary Patent
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• Where a Defendant in an infringement action counterclaims to
revoke a patent, with its Defence to Counterclaim the Proprietor may
apply to amend the patent: Rule 30.
• Such amendment must satisfy the requirements of Arts. 84 and
123(2) and (3) EPC. Art. 84 provides that claims must be supported
by the description and Arts. 123(2) & (3) provide that an EP may not
be amended in such a way that it contains subject-matter which
extends beyond the content of the application as filed (2) nor must it
be amended in such a way as to extend the protection is confers (3).
• Where such application to amend is accepted by the Court, further
pleadings may follow (Rule 32), namely
o Defendant’s Defence to Proprietor’s application to amend.
o Reply to such Defence.
o Rejoinder to such Reply

17. Procedural Aspects of the UPC (1)
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Court Experts : Art. 57 and Rules 185 - 187
• To resolve a specific technical question the Court may of its own
motion (and after hearing the parties) appoint a Court Expert.
• The Parties may make suggestions as to (1) the identity of the
Expert; (2) his required technical background; and (3) the questions
to be put to him.
• The Expert shall present an Expert Report within the time specified
by the Court.
• The Court shall invite the parties to comment on the Report either in
writing or during the oral hearing.
• The Expert shall attend the oral hearing and shall be open to
questions from both the Court and the parties.
• The Expert may not communicate with one party without the other
party being present or without the consent of the other party.

18. Procedural Aspects of the UPC (2)
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Protective Orders : Art. 58
To protect trade secrets access to such evidence may be restricted to
specific persons.
Orders to Produce Evidence : Art. 59 and Rule 190
Where, to support its claims, one party specifies evidence which lies in
the control of either the other party or a third party, the Court may order
production of such evidence, subject to a Protective Order (if
necessary) and provided that the Order will not result in an obligation
of self incrimination.
Orders to communicate information : Art. 67 and Rule 191
An infringer may be ordered to inform the claimant of the origin and
distribution channels of the infringing products or processes; quantities
produced and sold; and the identity of any third parties involved in
either the production of the infringing products or use of the infringing
process.

19. Procedural Aspects of the UPC (3)
19
Orders to preserve evidence and for inspection (Saisie) : Art. 60
and Rules 192 - 199
• With reasonably available and plausible evidence to support a claim
that the patent has been infringed, or is about to be infringed, the
Court may order – even before commencement of proceedings –
provisional measures to preserve relevant evidence in respect of the
alleged infringement. This may include
o a detailed description
o with or without taking samples
o or physical seizure of allegedly infringing products
o and/or the implements used in the production / distribution of
such products
o and the documents relating thereto.

20. Procedural Aspects of the UPC (3) – Cont’d
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Orders to preserve evidence and for inspection (Saisie) (2) : Art. 60
and Rules 192 – 199
 The Court may also, in the above circumstances, order inspection of
premises by an Officer of the Court. The requesting party may not be
present at such inspection, but may be represented at the inspection by
an independent professional practitioner named in the Court Order.
 The above Order may be made ex parte where delay may cause
irreparable harm to the requesting party or there is a demonstrable risk
of evidence being destroyed.
 Such Orders may be subject to the requesting party lodging adequate
security to compensate the other party for any prejudice suffered by
that party as a result of the Order being revoked or lapsing and/or
where it is subsequently found that there has been no infringement or
threat to infringe.

21. Procedural Aspects of the UPC (4)
21
Orders to preserve evidence and for inspection (Saisie) (3) : Art. 60
and Rules 192 – 199
• The Court has a discretion to inform the Defendant of the application
and invite him to make submissions (within a time to be specified) as to
why the Order should not be made. The Court may then order the
requesting party, or both parties, to attend an oral hearing.
• The Order (if granted) shall provide that, unless otherwise ordered by
the Court, the outcome of the documents produced / the evidence
obtained from an inspection may only be used in the proceedings on
the merits of the case.
• The Court will appoint an independent person (e.g. A Bailiff) to carry out
the inspection and to produce a written Report on the measures to
preserve evidence.

22. Procedural Aspects of the UPC (4) – Cont’d
22
Orders to preserve evidence and for inspection (Saisie) (4) : Art.
60 and Rules 192 – 199
• Where the Order is granted without the Defendant being heard,
within 10 working days after execution of the Order, the Defendant
may apply to have the Order revoked or modified and the Court may
order a hearing.
• Finally, if the requesting party fails to initiate an action on the merits
within 31 calendar days / 20 working days from the date of the
6Order, the Order shall be revoked and the requesting party may be
ordered to compensate the Defendant.

23. Procedural Aspects of the UPC (5)
23
Freezing Orders : Art. 61 and Rule 200
• With reasonably available and plausible evidence to support a claim
that the patent has been infringed, or is about to be infringed, the
Court may order – even before commencement of proceedings – a
party not to remove from is jurisdiction any assets located therein or
to deal in any assets, whether located in its jurisdiction, or not.
• The procedures relating to a Saisie Order (in the preceding 4 slides)
shall also apply to an application for a Freezing Order.
Experiments : Rule 201
• The Court may, of its own volition, order an experiment to prove a
statement of fact for the purpose of the proceeding.

24. Procedural Aspects of the UPC (5) – Cont’d
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Experiments : Rule 201 (2)
• If a party wishes to rely on an experiment, he must – as soon as
practicable in the written procedure – request and obtain permission
of the Court. The counterparty may comment on both the proposed
expert and the description of the proposed experiment(s).
• Where appropriate, the Court may order that the experiment(s) be
carried out in the presence of the parties and their experts.

25. Procedural Aspects of the UPC (6)
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Letters Rogatory : Rule 202
• The Court may of its own motion – but only after hearing the parties
– or on a reasoned request from a party issue Letters Rogatory for
the hearing of witnesses by other competent courts.
• Note in this respect, the existing ability to obtain such assistance
from the Courts of EU Member States provided for by Council
Regulation No. 1206/2001.
• Note also the procedure potentially available from US District Courts
pursuant to US Code 1782 for obtaining documents and evidence
from non-parties located in the United States.

26. Procedural Aspects of the UPC (7)
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Protective Letters : Rule 207
• A Protective Letter may be filed by a person who considers it likely
that an application may be made for a Preliminary Injunction against
him.
• The Protective Letter, if in compliance with the requirements, shall
be recorded by the Registry; and
• The Registry will provide details to all Local and Regional Divisions
of the Court.
• The Protective Letter shall subsist for 6 months, but may be
extended on application.

27. Procedural Aspects of the UPC (8)
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Case Management and the role of the Judge-Rapporteur (1) : Art.
43 and Rules 101 - 106
• The 3 month interim procedure follows the 6 months written
procedure (the pleadings). Its purpose is to make all preparations
necessary for the Oral Hearing before the full Panel of the Court.
• The interim procedure shall be completed within 3 months from
close of the written procedure.
• The Judge-Rapporteur may refer any matter to the Panel for
decision and the Panel may review – either of its own volition or at
the request of a party – any decision or Order of the Judge-
Rapporteur.
• The Judge-Rapporteur may hold an Interim Conference - which may
be held by telephone conference, video conference or in Court – to
deal with the following matters:

28. Procedural Aspects of the UPC (8) – Cont’d
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Case Management and the role of the Judge-Rapporteur (1) : Art. 43
and Rules 101 – 106 (2)
o identify main issues, determine which relevant facts are in dispute
and, if necessary, clarify the position of the parties on those issues
and facts
o set a schedule for the further progress of the proceedings
o explore with the parties possible settlement or use of the Mediation
& Arbitration Centre
o issue Orders relating to production of further pleadings, documents,
experts (including Court Experts), experiments, inspections, further
written evidence, and the matters to be the subject of oral evidence
and the scope of the questions to be put to the witness.

29. Procedural Aspects of the UPC (9)
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Case Management and the role of the Judge-Rapporteur (3)
o in the presence of the parties, hold preparatory discussions with
witnesses and experts with a view to properly preparing for the oral
hearing
o after consultation with the Presiding Judge, to order a separate
hearing of witnesses and experts before the Panel
o decide the value of the dispute.
 If the Interim Conference is held in Court it shall be open to the public
and shall be audio / video recorded and made publicly available.
 At least 2 months notice of the oral hearing will be set.
 At the closure of the Interim procedure, the Presiding Judge shall take
over management of the action

30. Powers of the Court : Arts. 62 - 69
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These shall include:
o ordering a Preliminary Injunction; Rules 206 and 208 – 213
o ordering a Seizure / Delivery-Up of accused products to prevent
entry into the channels of commerce
o ordering a freezing of assets of the alleged infringer: Rule 200
o ordering post-trial permanent injunctions
o ordering Corrective Measures against products found to have
infringed and where appropriate, in relation to materials and
implements used to manufacture such products
o revoking a patent entirely, or in part
o awarding damages, including interim damages. Post trial damages
may be assessed in a separate proceeding: Rules 118: 125 – 126
and 131 – 143
o awarding costs: Rules 150 - 157

31. CONTACT INFO
For more information contact David Perkins at
JAMS International
70 Fleet Street
London, UK EC4Y 1EU
Phone: +44 207 583 9808
Email: dperkins@jamsinternational.com
www.jamsinternational.com