Recently, a copy of the 15^th draft rules of procedure of the Unified Patent Court, was released. We now understand from the Bristows UPC website that this version of the 15^th draft rules has not been approved by the rules committee and may be subject to further change. We will keep you updated on the official 15^th draft and will link to it on IPCopy as soon as we can get our mitts on it. Before it became apparent that the circulated version was unofficial, IPCopy put together a tracked-changes version of the Rules comparing the fourteenth and (unofficial) fifteenth drafts, so you could spot the revisions easily.

We’ve decided to keep this tracked-changes version available on IPCopy for now, and when the official 15^th draft is released we’ll be taking another look. For the time being, and on the understanding that some of these changes might be undone in the official version, here’s a look at the changes that caught IPCopy’s collective eye…

Rule 5 – Opting out (and back in again!) – joint owners, fees, and a sunrise provision

There are quite a lot of revisions to Rule 5, some of which will be more welcomed than others!

IPCopy is pleased to see that Rule 5 now accounts for the situation of joint owners (all owners must apply for the opt out – one owner cannot opt out without the others ).

The opt-out fee, which had previously been the subject of rumour and speculation in UPC circles, has been made explicit, as has a fee for withdrawing the opt-out.

A new clause in Rule 5 sets out for the much hoped-for sunrise provision (more details on this is can be found in ipcopymark’s earlier blog post here).

The drafting committee have also added an interesting Note to rule 5 clarifying certain points in relation to the opt-out:

Note to Rule 5

*The Drafting Committee would like to note, in response to certain written comments received,

that the provisions of Article 83 of the Agreement for opting out are clear and provide for:

(i) a complete ousting of the juri si diction of the UPC;

(ii) such ousting is, subject to Rule 5.6, for the life of the relevant patent/application and

(iii) covers all designations owned by the proprietor in question.

Rule 13 – Bringing an infringement action – joint owners

Rule 13.1(f) now accounts for joint ownership when bringing an infringement action – if the plaintiff is not the sole proprietor, it must provide evidence to show that it is entitled to commence proceedings.

Rule 25 – Counterclaim for revocation – automatically joining the proprietor

As noted in a previous blog post, Article 47(5) of the Agreement specifies that if a claim is brought by a licensee, the defendant cannot counter-claim for revocation unless the proprietor is joined into the proceedings, which need not necessarily be the case. The fourteenth draft rules are at odds with this, providing for such a counter-claim even if the proprietor is not joined to the proceedings.

IPCopy is pleased to see an amendment to Rule 25(3), which now states that if a defendant counterclaims for revocation in this situation, the counterclaim is served on the proprietor, and the proprietor automatically becomes party to the proceedings.

We’re not convinced this will solve the problem entirely, but it’s certainly a step in the right direction.

Rule 40 – Acceleration of proceedings at the Central Division – no longer applies automatically to a revocation counter-claim

Surprisingly, a deletion from Rule 40 appears to have removed the obligation of the court to accelerate a counter-claim for revocation at the central division if it has been referred by a local or regional division. This means that if a local or regional court chooses to bifurcate, and refers a revocation action to the central division, the central division is under no obligation to accelerate the revocation action.

IPCopy is surprised to see this deletion; it certainly won’t help to placate those with concerns over the possible effects of bifurcation.

Rule 150 – Costs orders – court costs to be included

An interesting addition to the Rules regarding costs orders: the costs order will include costs incurred by the court, for example for translators, as well as those incurred by the successful party.

Rule 211 – Provisional measures – provisional costs awards now included

Something which IPCopy was very intrigued to see: Rule 211, which sets out particular examples of provisional measures that can be ordered by the court, now includes a provisional award of costs.

Rule 287 – Privilege – some clarification provided

Organisations including the IPFederation previously raised concerns regarding the provisions for Privilege, which you can read about here.

Rule 287 has been amended to clarify the privilege position: a new clause has been added stating expressly that the definition of a patent attorney encompassed the definition under 134(1)EPC.

Those are the highlights that struck us as the most interesting. Feel free to comment below if you have any thoughts as to the implications of these revisions, or if anything else has caught your eye!

Emily Weal 13 May 2013