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November 26, 2014 - Rules of procedure of UPC – Public hearing in Trier

Axel CASALONGA, Chairman of the epi Litigation Committee participated to a Public Hearing organized by the Legal Group of the Preparatory Committee.

The Hearing was chaired by Johannes KARCHER, Chairman of the Legal Group of the Preparatory Committee.

The panel comprised members of the Legal Group as well as Members of the Expert Group (who was responsible for the preparation of the successive drafts of Rules of Procedure).

The Chairman, Mr. KARCHER, indicated that discussions would be organized by focusing first on Rules 5, 14, 118 and 220 since the Legal Group considers necessary to receive comments of the participants on those Rules for which no final decision has been taken yet by the Legal Group.

After the public hearing, the Expert Group will consider the remarks and suggestions provided and an amended draft of Rules of procedure will be issued.

1. Rule 5 – Opt-out

Following the presentation of all comments from the audience, the Chairman, Mr. KARCHER, summarized the following conclusion.

1/ Article 83-3 UPC, clearly states that the opt-out shall take effect upon its entry into the Register. Therefore, it is not possible to shift the effective date to the date of receipt by the register. In addition, it is not foreseen that the register would make any specific control after receipt of an application to opt-out so that such an application will be entered into the register almost immediately as soon as the requested fee has been paid and the application received.

Article 83 UPC also states that the application to opt-out must be notified to the registry.

Therefore, it does not seem possible to accept applications to opt-out filed at the EPO after the agreement has come into force, as suggested by some participants.

2/ Concerning the representation for an application to opt-out, it was noted that the new amended Rule 5-4 confirms that it is not compulsory to be represented for filing an application to opt-out or an application to withdraw an opt-out. However, Rule 5-4 states that if a representative is appointed such a representative may include in addition to the representative mentioned in Article 48 UPC (i.e. lawyers and European Patent Attorneys having an appropriate qualifications such as a European Patent Litigation Certificate) also professional representatives defined in Article 134 EPC (i.e. any European Patent Attorney).

3/ The possibility to file an Application to opt-out in advance, before publication of a European patent application will be considered by the Expert Group.

2. Rule 14 – Languages of proceedings before the UPC

It must first be reminded that the aim of Rule 14 is to organize the choice of the language of proceedings for the case a local division opens to the plaintiff the possibility to choose between the official language of the Contracting Member state hosting said local division (Article 49-1 UPC) and one or more of the official languages of the EPO (Article 49-2 UPC).

The present wording of Rule 14 suggested by the Expert Group makes a distinction between the Official language defined in Article 49-1 UPC and the languages of the EPO authorized according to Article 49-2 UPC which languages are noted "additional languages" in the present draft for Rule 14. The position of the Expert Group is such that the possibility to choose an "additional language" is a privilege given to the plaintiff, which privilege should be somewhat limited in order to take into account the interests of the defendant.

Consequently, Rule 14-2(b) states that the plaintiff should be obliged to choose the official language according to Article 49-1 UPC if the infringement acts occurred only on the territory of the Contracting Member state where the defendant has a domicile and where the local division is located (i.e. a territorially limited infringement action).
In addition Rule 14-2(c) proposes that a Contracting Member state may decide that its local division shall allow the parties to use the "additional language" only for :

  • - preliminary objections and/or
  • - written pleadings and other documents including written evidence and/or oral hearings.

This would mean that all other steps of the procedure would remain in the official language defined in Article 49-1 including particularly the written decision issued by the Court as well as all orders for preservation of evidence, preliminary injunctions, etc... leading finally to a double language proceedings.

Several participants spoke against Rule 14-2(c) considering that this rule introduces an excessive complication to the system. It was also noted that a Contracting Member state could only apply part of the restriction and modify in the future the language organization before its local division. It was also insisted on the fact that the UPC agreement makes no difference between the language of the proceedings defined in Article 49-1 as compared to Article 49-2. Consequently, all the chosen languages of the procedure should be considered on the same level.

On the other hand several members of the audience expressed their agreement and support for the provisions of Rule 14-2(c), indicating that it presented a good compromise and allowed for a satisfactory flexibility.

The chairman, Johannes KARCHER indicated that the provision of Rule 14-2(c) was introduced with the aim of facilitating the possible use of the languages of the EPO before the UPC.

At the end of the discussion, the general feeling was that Rule 14-2(c) will remain within the definitive Rules. It must be noted that the provisions of this Rule are not compulsory so that the Contracting Member states have the possibility of designating such an "additional language" without the restrictions provided in Rule 14-2(c).

3. Rule 118 – Decision on the merits/injunction

According to Rule 118-1 the Court has the discretion of granting or not a permanent injunction. This is in accordance with Article 63-1 of the EPC Agreement which states that "the Court may grant an injunction against the infringer".

Rule 118-2 which provided for the conditions to be met when the Court would have ordered damages and/or compensation instead of permanent injunction, has been cancelled from the 17th draft of Rules of procedure.

The explanatory note of the Legal Group dated 31 October, 2014 indicates that the deletion of Rule 118-2 was considered appropriate since the initial wording, which stemmed from Article 12 of the Enforcement Directive 2004/48/EC, is in line with EU Law since the Directive does not make implementation of this provision an obligation for the Member States.

According to the explanatory note of the Legal Group, where the Court finds an infringement of a patent, it will under Article 63 of the Agreement give order of an injunctive relief. This follows from Article 25 of the Agreement which recognizes the right to prevent the use of the invention without the consent of the patent proprietor as the core right of the patentee. Only under very exceptional circumstances will the Court make use of its discretion and not give such an order.

A certain number of participants of the audience were reluctant to accept that the Court would normally grant a permanent injunction. Indeed, the situation of so called “essential” patents covering for example a standard was mentioned. In such cases, the Court should exert its discretion and not grant a permanent injunction.

In conclusion, Paul van BEUKERING (Chairman of the Preparatory Committee) considered that the present wording of the note of explanations drafted by the Legal Group should certainly be revised by the Preparatory Committee.

4. Rule 220 – Appealable decisions

Rule 220-2 now organizes the procedure for leave to appeal decisions relating to certain orders.

According to the provisions of this Rule in its present wording (17th draft), those orders may be appealed with the appeal on the merit or before, with leave of the Court of First Instance.

In case of refusal of the Court of first instance, a request for a discretionary review to the Court of appeal may be made. The standing judge of the Court of Appeal may disregard the request without giving reasons. If the standing judge allows the request, the Court of Appeal shall assign the review to a panel of the Court of Appeal for decision and the Court of Appeal may consult the panel of the Court of first instance which has refused the leave order.

It was noted that this procedure of discretional review is similar with the review procedure organized by Rule 333 (review of case management orders). The review procedure is not a complete appeal procedure and does not have to follow the Rules of the Appeal procedure.

The procedure becomes a complete appeal procedure when it has been accepted by the Court of Appeal.