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Unitary patent and Unified patent court – Conference Review (Part I)

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EU flagLast week on 4 July I had the good fortune to attend the 2nd annual conference on the “Unitary patent and Unified patent court” held in Paris.

The strapline for the conference was “The Patent Revolution is ON” which was an effort  to highlight the most significant change in European patent law in 40 years or so. In reality, as many of the panelists were keen to point out, the unitary patent system represents a modification of the existing systems and should be perhaps viewed as an evolution rather than revolution.

There was a significant amount of ground covered at the one day event and many of the panelists at the conference are people who are actually involved in bringing the new patent system into being. We had judges from around Europe as well as members of the both the EPO Select Committee and the Preparatory Committee.

Given the ground covered I’m going to go session by session to highlight the issues that were discussed.

1) Introductory Speech – Paul van Beukering (Prep Committee)

Paul provided some recent context to the development of the unitary patent (UP) system as well as highlighting some active issues and some upcoming matters.

Paul suggested that the tone of commentary on the UP system has changed over the course of the last couple of years from cynicism to a more positive outlook. Personally, I’m not sure whether the attitude of people has changed or whether there’s been a general acceptance that the UP system is coming and we need to make the best of it. Whatever has happened though people generally seem to be anticipating the arrival of the new system rather than looking for ways to attack it.

The first of what would be a few references throughout the day by various panelists to a recent Allen & Overy survey was then made. It was noted that the recent A&O survey suggested that companies are looking favourably on the new system. [That may be what the A&O survey suggested but it should be pointed out that the surveyed companies were all large and medium sized entities in specific technology fields. Not exactly a representative sample to my mind and certainly not representative of the SMEs who the system is meant to be designed for.]

Paul indicated that the Prep Committee would be meeting on 8 July to discuss the applications for judges (more on this later) and that the judge training is expected to start after the summer.

The ongoing consultation on the European Patent Litigation Certificate (EPLC) was mentioned and a plea made to submit comments if you have them. [There’s an EPLC exercise going on in the UK with CIPA but the view from the recent CIPA seminar seemed to be that we should all comment, not just leave it to CIPA. See also our post on the consultation here]

The introductory session was closed by Paul noting that a public hearing on the rules of procedure is expected in the Autumn, that he doesn’t want the opt-out fee to be prohibitive and that he wouldn’t be drawn on the actual starting date. There was also a first mention of (yet) another consultation to look out for – this time on the UPC Court fees.

Next up was possibly the most anticipated session from my point of view

2) EPO Select and Preparatory Committees: A Critical Review

This session provided updates for both the committees involved in brining the UPC system into force.

First up was Jerome Debrulle (Chair EPO Select Committee) who gave a summary of the EPO’s activities. Jerome indicated that the Select Committee has, in principle on 24 June, approved the rules that will be used to administer the unitary patent. No indication was given when we can see these rules yet though!

On the issue of renewal fees Jerome indicated that there will be a single fee paid to the EPO which will be progressive in nature. There are apparently 9 separate parameters which are being used to assess the level of the fee, including

1. The desire to facilitate innovation in the EU
2. The need to take account of SMEs
3. The need to reflect the size of the market
4. A wish to be equivalent to the avergage geographical coverage of current EP practices
5. A need to balance the EPO’s costs

So, the fee needs to be low enough to ensure the system is attractive to users but high enough that the EPO is not out of pocket…..

So, what of the actual fee level? Still no news!!

Jerome highlighted that there is a complex methodology being used to work out what the renewal fee level will be and modeling of a number of scenarios is taking place (from a scenario where the UP renewal fee is based on the top 3 countries (i.e. countries participating in the UP system) that EP patents are validated in up to a scenario which considers the top 10 countries). The distribution of renewal fees is another area to be considered but this apparently won’t be looked at until the fee level is better known.

Jerome indicated that it would be somewhere between March and June 2015 before the EPO Select Committee had done its job. So it would seem we could have another year to wait before we get a feel for the renewal costs of the unitary patent. This represents yet another slip in the time frame. I’m sure initially the EPO President was looking at summer 2014 and then Winter 2014. Now it’s summer 2015.

Next was Alexander Ramsay (Vice chair Prep Committee) who recapped on recent ratifications by Denmark, Sweden and Belgium before noting that there would be a consultation on the court fees at some point later this year. Alexander also noted that the Prep Committee roadmap has been revised but this hasn’t made its way onto their website yet.

Olivér Varhelyi (Deputy Permanent Representative of Hungary to EU) then summarized what’s been going on with the appointment of judges. This section contained some interesting facts and figures about the process. Olivér indicated that the provisional list of suitable candidates for the legal and technical judge positions would be decided this week.

There were approximately 1300 applications in total for both the technical and legal positions. These have been sorted into eligible applicants (who need no further training) and eligible applicants requiring training. [Although reference was made to candidates being split into “eligible” and “eligible with training” groups, I believe that this relates to general legal training and in fact both groups will be receiving some sessions on the Rules of Procedure of the Unified Patent Court]

For the legal positions there are a total of 354 applicants of whom 171 are already eligible and 183 who require some training. For the technical positions there are 341 applicants who are eligible already (from around 600 total applicants). Apparently nearly 90% of these applicants are EPAs. [Look around you, you may be sitting next to a future technical judge!] What was interesting here was that the candidates for the technical judges are all deemed to be up to speed already on the required patent law aspects (e.g. validity).

The judge applications are apparently not currently evenly geographically spread. There are also around 20-30 applicants from countries that do not currently see much litigation that will require extra, front loaded training.

Training in any case is expected to begin in September 2014.

In the Q&A that followed this session it was asked whether the remaining 10% of technical judge applicants have come from the EPO Boards of Appeal because there’s potentially a conflict of interest here. Alexander confirmed that the Prep Committee are to take a view on this issue in the near future.

Julie Saint-Paul (Intellectual Property – Competition law, Ministry of Justice in France) indicated that the legal working group has met 3 times in the last five months and has covered subjects such as patent trolls and bifurcation. Julie indicated that a new draft of the rules of procedure is expected soon.

This presentations in this session were concluded by Corinne Vedel who is the Head of IP at CEA (atomic energy commission in France). CEA are a large user of the patent system with around 1500 patents that have been validated in 3-4 states on average. Corinne highlighted that the cumulative renewal costs of those four countries (DE/FR/UK/NL) is around 4 times that of the US.

The first half of the morning session concluded with a Q&A where Simon Dack (chair of the session) did his best to get the panel members to comment on where they thought the renewal fees would end up.

Corinne indicated that what the CEA might regard as a reasonable fee would depend on the technology field. Jerome thought the renewal fee would be pitched somewhere between 3-7 average country renewal fees (it wasn’t clear here whether they were using the EPO’s maintenance fees as a guide here) and Alexander thought that the figure would settle on 4 times the average.

On the issue of SMEs it was indicated that a two tier renewal fee system would not be the only way to ensure the needs of SMEs are met. We could have a generally low fee as well.

It was noted that as the UP can get going with only 13 countries [12 if one of the ratifying countries is Italy!] and as the coverage of a unitary patent will not expand as other member states ratify then this makes modeling the renewal fee amount very tricky.

Finally a quick question was raised on the Prep Committee’s interpretative note. Although the participants were all in agreement there is one vocal opponent to the position stated in the note (I believe this may be Prof Winfried Tillmann).

We will posting the review of the second half of the morning session of the Unitary patent and Unified patent court conference later in the week.

Mark Richardson 8 July 2014

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