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

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EU flagThis post covers the afternoon sessions from the “Unitary patent and the Unified patent court” conference in Paris on 4 July.  This post covers a session from a number of European judges on the UPC and views from some IP intensive companies (such as Google, Microsoft and GSK). [Part I and Part II cover sessions (1) through (4).]

5) Rules of Procedure of the Unified Patent Court: Where we are and where it ends?

This session included contributions from The Hon Mr Justice Birss (High Court of Justice of England and Wales), Marie Courboulay (Superior Court of Paris), Dr Klaus Grabinski (Federal Supreme Court, Germany), Samuel Granata (Commercial Court of Antwerp) and the Hon. Rian Kalden (Court of Appeal the Hague) who discussed issues with the  the rules of procedure of the UPC. Some points gleaned from this session were:

• All the judges were in agreement that permanent injunctions will almost always follow a finding of infringement on a valid patent. Although certain legal systems technically have discretion as to whether to apply such an injunction this discretion is rarely exercised. The only real instances where it might be exercised were if there was an abuse of rights or a public interest issue in place.
• Dr Grabinski indicated that the situation for preliminary injunctions is different and he’s more careful about granting such injunctions, especially where it relates to an ex parte matter. The Hon Mr Justice Birss indicated that such injunctions are rare in the UK.
• Dr Grabinski indicated a scenario where bifurcation could occur. If there were multiple but different infringement claims on the same patent at the same time then it might make sense to bifurcate the validity question centrally.
• In a presentation on the Judge-rapporteur’s role, Dr Grabinski indicated that this would be a very important role within the UPC. The UPC procedure breaks down into three main sections: the written procedure, the interim procedure (preparation for oral proceedings and settlement issues) and the oral proceedings themselves. The Judge-rapporteur will be the “master of the written procedure” and will be involved in the first two sections. It will also possible for the Judge-rapporteur to be the Presiding judge in the oral proceedings.
• Article 73(2)(b) of the UPCA was flagged up during the discussions in this session. This article refers to the “Court” in a manner which does not make it clear if this is meant to cover the Court of First Instance or, additionally, the Court of Appeal. The Prep Committee are apparently undecided on this issue.
• The Hon Mr Justice Birss highlighted the exaggerated perceptions that people have of the UK legal process (long judgments) and the EPO process (“ping pong” between the Opposition and Appeal divisions). Dr Grabinski indicated that the UPCA states that the Court of Appeal will only refer back to the Court of First Instance in extreme cases so instances of EPO style “ping pong” should not happen at the unified patent court.

6) IP-Intensive Companies: Will Innovation & Growth Really be at the End of the Road?

The final session of the conference highlighted the view from potential users of the UP system.

David Rosenberg (Vice President of Corporate IP Policy at GlaxoSmithKline PLC) indicated that the two most important factors, from their point of view, that they are looking for in the new court system are the quality of judgments and the predictability of proceedings. Other factors that will be important for them are the speed of proceedings and the cost of the system. David indicated that he thought the current court system within Europe is OK and that he might have preferred the EPO experience to have been improved rather than tweaking the litigation system. David also indicated that while there is uncertainty over costs then GSK will not touch the court system until they have confidence in it. He also voiced a concern that the court costs may be higher than the current arrangements in which case they’d look elsewhere or maybe consider national patents.

David Laliberté (Director of IP Policy at Microsoft) noted that the current system can be abused and referenced a University of Cardiff study that suggested that 11% of litigation cases in the UK involve trolls. He felt that Microsoft’s position regarding the UP system had become more positive in the last year as progress has been made by the Prep Committee to address stakeholder concerns. He still has issues over permanent injunctions and bifurcation. The issue of costs as a sticking point came up again with David indicating that Microsoft is not sure it’ll use the system until all the costs are fully known. 3-4 validations in Europe is typical for Microsoft.

Catherine Lacavera (Director of IP & Litigation at Google) noted that Google has a large presence in Europe (2000 EP patents in force (!) and around 6000 employees in the area). 9 years ago Google had not seen any patent lawsuits but there’s been an explosion in the last 5 years in the US in the high tech space, primarily from NPEs but also from competitors. Catherine indicated that Google are seeing troll like activity in Germany and are keen that the “patent plague” in the US does not spread to Europe. On the issue of bifurcation Catherine queried how a claim can be construed by a court that has not taken a view on prior art [this isn’t exactly how I thought the system will work. As far as I’m aware infringement and validity arguments will be presented in the written phase and the decision on bifurcation will only happen later such that the division dealing with infringement will have seen the validity arguments].

Mark Richardson 11 July 2014

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