L'UPC avanza; brush up your Italian?

Preparations for the Unified Patent Court (UPC) continue apace. 

Not only have the all-important UPC Rules of Procedure been agreed, but so have the fees for using the court and where the local divisions will be situated. Rumours also suggest Milan is likely to host the section of the central division dealing with life sciences patents.

It now appears the UPC Preparatory Committee is homing in on a date for opening the court in early 2023.

What changes have been made in the final Rules of Procedure

After a decade of development, a final version of the UPC Rules of Procedure is agreed and will enter into force on 1 September (for which only a mark up is currently available). For the most part the latest changes to the Rules are technical, but there are three changes that have potential practical and strategic importance.

Unauthorised opt-outs

To deal with the possibility of unauthorised opt-outs or withdrawals of opt-outs in the UPC, a new Rule 5A permits the proprietor/s of a European patent, applicant/s or holder/s of an SPC, to apply to remove it. This requires reasons to be given and the UPC registrar has to make a decision whether to remove the opt-out or withdrawal as soon as practicable, subject to a further possible review by the President of the Court of Appeal. 

Providing this procedure is quick enough, it should avoid the time and cost of dealing with unauthorised opt-outs and withdrawals after an action has already started. 

Opt-out extends to all European patents in a bundle

A reference to 'Contracting Member States' in the previous version of Rule 5.1(b) Rules of Procedure concerning opt-out has been replaced with 'states'. This now requires all designations of the European patent to be opted out, whether or not the country designated is participating in the UPC. The same change has been made in Rule 5.7 concerning withdrawal of an opt-out.

An explanatory note to the amendment explains that the previous wording was 'inconsistent with the indivisibility of the application to opt out. It implies that the UPC solely has jurisdiction over UPCA Contracting Member States, which is not the case'. This appears to be a reference to the 'long arm' power of the UPC to award damages and preliminary injunctions in respect of European Patent Convention countries outside the UPC (for example the UK and Switzerland). 

The same amendment has not, however, been made in the context of the corresponding bar on withdrawal of opt-out for a patent in Rule 5.8. This applies once a national action has been filed in respect of an opted out patent. It is not clear whether this is an omission and, consequently, it is unclear whether an action relating to an opted out European patent in a non-UPC country such as the UK would prevent withdrawal of the opt-out for all patents in the bundle. 

Access to documents

The UPC broadly operates according to the principle of ‘open justice’ in which proceedings are, by default, open to the public. In keeping with this principle, written pleadings, written evidence, decisions and orders lodged at or made by the UPC were formerly, by default, available to the public. This remains the case for decisions and orders, which are to be published automatically on the UPC website. However, written pleadings and evidence have now been carved out from the general default and require a reasoned request to the Registry if they are to be accessed. 

To explicitly allow the protection of confidential information, particularly in pleadings and evidence, the amendments also introduced a new rule by which a party may apply for an order that certain information in proceedings is restricted or prohibited, or that access to such information or evidence is restricted to specific persons. 

This latter change envisages the use of ‘confidentiality clubs’, which will be particularly important in FRAND cases, and reflects provisions already in Article 58 of the UPC Agreement.

What has been agreed on fees?

Despite having been set over six years ago, the fees for bringing an action in the UPC will remain unchanged, subject to some small additions for certain appeal stages that had previously been omitted.

This means, most importantly, that the fixed fee for an infringement action remains at €11,000 and the additional value-based fee still ranges from €0 (for actions valued at up to and including €500,000) to €325,000 (for actions valued above €50,000,000).

The fee for revocation actions remains €20,000.

As before, these fees must be paid again for an appeal and, in the case of infringement actions, for a claim to damages.

Shall I pack a bag for Milan?

Not just yet. There is a rumour that the Dutch Prime Minister has given up on the idea of The Hague taking the third branch of the central division covering life sciences subject matter (that was originally to have been in London) in favour of Milan. But, this is not confirmed.

What we do know, from the UPC Preparatory Committee, is that the local divisions of the UPC will be located in Austria (Vienna), Belgium (Brussels), Denmark (Copenhagen), Finland (Helsinki), France (Paris), Germany (Düsseldorf, Hamburg, Mannheim, Munich), Italy (Milan), the Netherlands (The Hague), Slovenia (Ljubljana) and Portugal (Lisbon).

The regional Nordic-Baltic division will be mainly located in Sweden (Stockholm). 

There is also news that Organisational Rules have been agreed on the UPC’s Patent Mediation and Arbitration Centre, to be based in Ljubljana and Lisbon.

What is the latest on the opening date?

There is also a rumour that the UPC and the Unitary Patent system will become operational on 1 March 2023. However, many such rumours have proved to be wrong in the past. All the UPC Preparatory Committee is saying for the moment is that the start of operations can reasonably be expected in 'early 2023'. 

There is no news on when the sunrise period for opt-out will begin.