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May 4, 2016
We are coming closer to the needed 13 ratifications. Bulgaria has just put everything in place to allow the government to ratify. Eileen Tottle of the Preparatory Committee has reported that Hungary and Slovenia will ratify shortly. This would bring the total number up to 12 ratifications - still excluding Germany and the UK. Eileen has confirmed the long spread rumour that Germany is expected to be the last of the crucial three necessary ratifications of the three largest EP-filers of the member states (currently UK, France and Germany) to ratify. Germany is supposed to hold back its ratification until the court is ready to start. Upon Germany submitting its ratification document in Luxembourg the 4 month period provided in Art. 89 will be triggered. The court is to on the first day of the fourth month after the deposit of the thirteenth instrument of ratification.
May 4, 2016
Ratification / Brexit
Ratification by the UK is a hotly discussed topic. Parliament is working for ratification. There are two Statutory Instruments to be signed before ratification meant to bring UK laws in line with the UPC Package and coming into force upon ratification. The Statutory Instrument (2016 No. 388) was signed on 12 March 2016 without the Parliament needing to amend it. The other SI is required to reflect the UPC Protocol on Privileges and Immunities. It is now being drafted following the recent approval of that Protocol by the Preparatory Committee at its February meeting. This is in line with the UK government having adopted a policy whereby it proceeds on all matters on the basis that the UK will remain in the EU. Yet, will there be ratification before the referendum. The UK IPO has explicitly stated that “the UK’s EU referendum will have no effect on UK ratification of the Unified Patent Court Agreement by the middle of 2016. This is in line with the timescale identified for the conclusion of the preparatory work necessary for the UPC to become operational. Ratification will happen before the Court is expected to open, in early 2017”.
Yet, it is doubtful that this holds true in light of the latest blow against the EU supporters in the UK by Panama papers of PM Cameron and mayor Johnson declaring to be in favour of a Brexit. Ratifying an international treaty giving away British competence in patent matters would immediately induce loud spoken arguments that Cameron is trying to decide in a rush although there is no such rush. Finally, among those for a Brexit we also find Justice Secretary Michael Gove. It is unlikely that the Justice secretary will push forward a project he does not endorse without substantial need. He will rather suggest to wait until after the referendum.
May 4, 2016
Among the issues less known to the public is the application phase for judges. On May 15, the Preparatory Committee announced that the UPC judicial recruitment package had been agreed with the advertisements to be published in May (Advertisement for judges ). 50 Judges are expected for the time being. The run for the positions is not as intense as previously thought. The reason is not that much the income but the consent to secondment (UK), uncertainty of the workload, the place of work, and the handling of insurances, pensions and the like in the course of such changes (Germany).
May 4, 2016
Last Sets of new Laws
The Code of Conduct ist expected to be agreed at the next meeting of the Preparatory Committee on May 20. The Protocol on Privileges and Immunities will enjoy a signing ceremony by the end of June.
May 4, 2016
Finally: Some Companies reveal future strategy
Large filers like Siemens have publicly declared to (only) selectively opt out. The intend to use the UPC from the beginning. As for filing strategy Siemens has claimed to consider 20 % of its long term portfolio to be unitary. Siemens will use the possibility of "double protection" provided by German law if a European patent is unitary or not opted out. Siemens has declared to be willing to use the UPC. However, where possible it will continue to file oppositions and not rely on more costly revocation actions.
March 3, 2016
UPC - Proposal for Court Fees and Recoverable Costs
Last week, the Preparatory Committee proposed the amounts of court fees and recoverable costs. There will be fixed fees and value-based fees: For infringement actions, the court fees shall be € 11,000 minimum plus a value-based fee for actions with a value-in-dispute exceeding € 500,000. The ceiling for the value-based fee shall be € 325.000 (for an action with a value-in-dispute of more than € 50 m). For revocation actions, a fixed court fee of € 20,000 shall be due. As regards reimbursement of legal fees (for the most part patent attorneys’ and lawyers’ fees) the draft proposes ceilings between € 38,000 (value-in-dispute of € 250,000) up to € 2 m (value-in-dispute of more than € 50 m). Also, it is proposed that no official fee shall be charged for an opt-out. For more details, please look at the Guidelines and the Rules.
March 2, 2016
Proposed German Legislation on Double Patenting
In a legislative draft dated February 5, 2016 it is suggested to lift the traditional German prohibition of double protection: A German patent and (1) a parallel traditional (non-opted out) European Patent or (2) a European Patent with unitary effect (“Unitary Patent”) may exist in parallel. This means that the proposed law allows double patenting to a bigger extent than is currently the case in Germany. To protect the defendant from being sued in parallel (before the UPC and national German courts), he is given the right to object to a parallel infringement suit in Germany.
August 6, 2015
Unitary Patent: Expected renewal fees increase its attractiveness
On June 24, 2015, the Select Committee with its majority recommendation of the “True Top 4”-proposal held out the prospect of a clear savings potential by making use of the unitary patent. If the Select Committee reaches a consensus on a corresponding allocation key in mid-September, an economically convincing argument, especially for the medium-sized companies, would further smooth the way for the unitary patent.
August 6, 2015
UK wagging the UPC
Even though it was considered unlikely that the UK ratifies the UPC as a European project before the UK referendum took place, latest news affirm that the necessary legislative preparations shall be completed in spring 2016. Learning from the Grexit-discussion consequences of a possible loss or delay of a UPC-key Member State should be discussed. How intense does the UPC depend on the UK?
May 5, 2015
CJEU dismisses Complaints of Spain. The UPC will come.
The last obstacle has fallen. Today the CJEU has followed the opinion of the advocate general and dismissed the complaints of Spain. Most of the reasoning in the decision will be interesting for other similar matters but little for the Unified Patent Court. The regulations on the unitary patent and translation requirements do not violate EU law. Thus, the entire UPC/UP package is ready to go live. Only to the extent the decision of the CJEU gives guidance for how the UPC is to deal with the provisions and drafts of provisions existing so far a detailed analysis is worthwhile from a patent practitioners point of view. The available press releases shows nothing in this respect.