On 10 April 2017, the UPC Preparatory Committee released an updated version of the 18th draft of the UPC Rules of Procedure (with the amendments being dated 15 March 2017). Subject to formal adoption, we understand that this update may represent the final version of the UPC Rules of Procedure.
The UPC Preparatory Committee has already published its Rules on Court fees and recoverable costs (here) along with Guidelines for the determination of value–based Court fees and the ceiling of recoverable costs of the successful party (here). See our e-bulletin of 2 March 2016 for commentary on these Rules and Guidance.
The 17th draft UPC Rules published in 2014 had addressed concerns raised about some of ambiguities of the opt-out process, made a number of minor amendments to issues relating to case management and interim orders, and also addressed what has been known as the "injunction gap" caused by bifurcation (see our IP Ebulletin of 10 November 2014).
In the 18th draft (un-updated) the following amends were made (inter alia):
- Choice of Central Division seat/section: Rule 17(3) has been amended to set out how the choice is made as to where in the Central Divisions (the Paris seat or another section (London or Munich)) a case in heard where there is more than a single patent with a single classification. The 18th draft provides significantly more detail on how these decisions are to be made where there are a mixture of patents and classifications involved and who will make them. The Registry will refer the case to the presiding judge of the seat/section that has jurisdiction in relation to the category of classification of the patent that is first listed on the patent, if it is a single patent with multiple classifications; if there are multiple patents then this approach is applied to the patent first listed on the Statement of Claim. The presiding judge then has the discretion to decide whether their seat/section is appropriate or not. If not, the case is referred to the President of the Court of First Instance to determine the seat/section where the action will be heard.
- Proceedings: Rule 10 on the stages of UPC proceedings has been amended to allow for an oral procedure "unless the Court dispenses with the oral hearing with the agreement of the parties" (replacing "where necessary"). Also mentioned in the new in 18th draft is the decision by default option for a judge-rapporteur if his requirements for further evidence to be provided/answering of specific questions etc (see Rule 103) are not complied with.
- Settlement: Amends to the Mediation and arbitration proceedings section to include information on the use of the Patent Mediation and Arbitration Centre PMAC for settlement.
- Allocation of judges: Amends to Rule 345 clarify that it is the President of the Court of First Instance, or a judge to whom he has delegated the task in a division, the seat of the central division or one of its sections, who will allocate the judges to the panels of the local and regional divisions, the seat of the central division and its sections (Rule 345.1). The same arrangement applies for the allocation of judges as judges for "urgent actions" (see Rule 345.5). The Registrar will assign the actions to the panels, though using an action-distribution scheme established by the presiding judge (also appointed by the President), in each local/regional/central court.
- Security for Costs: Confirmation that if there is a failure to provide adequate security for costs within the time period specified by the Court, a decision by default may be given.
- Evidence: The 18th draft adds a reference to Council Regulation (EC) No 1206/2001 of 28 May 2001 on cooperation between the courts of the Member States in the taking of evidence in civil or commercial matters and states that this will apply in relation to taking of evidence in the EU. The Regulation makes it easier to take evidence in another Member State. It applies in civil and commercial matters where the court of a Member State requests the competent court of another Member State to obtain evidence or requests permission to gather evidence themselves in another Member State. The request should be made to obtain evidence which is intended for use in judicial proceedings, commenced or contemplated. However, Denmark is not participating in this Regulation.
- Penalties: New Rule 354.4 confirms the enforcement of penalties. The court's decisions and orders may provide for periodic penalty payments payable to the court in the event that a party fails to comply with the terms of an order. The court sets the value of such payments having regard to the importance of the order in question. If it is alleged that a party has failed to comply with the terms of the order of the court, the first instance panel of the division in question may decide on penalty payments provided for in the order upon the request of the other party of its own motion. Parties may both be heard and there may be an appeal.
- Languages: Rule 14 has been amended in the 18th draft to add more options for the choice of language so as not to disadvantage a defendant in a court where there are multiple local languages.
- Proprietorship: There are amends to Rule 42 to allow for revocation and Declaration of non-infringement (DNI) actions brought against the registered proprietor where the actual proprietor is someone else – this amend deals with the problem by requiring a registered proprietor sued for revocation or in a DNI action to apply to the Court as soon as practicable after service for the substitution of the registered proprietor by the Rule 8.5 proprietor. There are similar to the issue on declarations of proprietorship when applying for opt-out – see amends below re proprietorship generally and on opt-out.
Where an action for revocation is directed against the proprietor listed at the registry but this is not the actual proprietor (ie where a change of ownership has not be recorded at the registry) the registered proprietor must, as soon as practicable after service, apply to the Court for the substitution of the actual proprietor into the proceedings (Rule 42.2 and Rule 8.5).
There are additional paragraphs to Rule 8 to provide a mechanism for proprietors who are not registered to be treated as proprietor of a UP for the purposes of proceedings: the person(s) shown in the register of the European Patent Office Register for unitary patent protection as the proprietor(s) shall be treated as such. If during proceedings before the Court a new proprietor is recorded in the Register for unitary patent protection, the former registered proprietor may apply to the Court pursuant to Rule 305.1(c) for the substitution of the new proprietor.
In relation to the proprietor of a European patent, the person entitled to be registered as proprietor under the law of each Contracting Member State in which such European patent has been validated shall be treated as the proprietor whether or not such person is in fact recorded in the register of patents maintained in such Contracting Member State and there will be a "rebuttable presumption" that the person shown in each national patent register and the European Patent Register kept by the European Patent Office is the person entitled to be registered as proprietor (or applicant as the case may be).
For more on this see our article in PLC Magazine, November 2015 "The New Unitary Patent Regime – Prepare and Protect your Portfolio" also on Practical Law at http://uk.practicallaw.com/3-619-5858.
The contents of this publication, current at the date of publication set out above, are for reference purposes only. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action based on this publication.
© Herbert Smith Freehills 2020