The 17th draft of the Rules of Procedure of the Unified Patent Court Agreement appeared online recently in advance of the oral hearing in Trier tomorrow (26 November 2014). We’ve taken a quick look over the changes to highlight a few points that have changed.

Representation

The consultation on the proposal for the European Patent Litigation Certificate was held during the summer. One area that has flagged up in the area of representation at the UPC is the definition of “lawyer” in Article 48(1) UPCA and in rule 286 of the Rules of Procedure.

Rule 286 has been amended again in the 17th draft and (in part) now reads:

A lawyer within the meaning of Article 48(1) of the Agreement is a person who is authorised to pursue professional activities under a title referred to in Article 1 of Directive 98/5/EC and by way of exception a person with equivalent legal professional qualifications who, owing to national rules, is permitted to practice in patent infringement and invalidity litigation but
not under such title.

The Explanatory Note that comes with the 17th draft states in relation to this rule that:

In Rule 286.1, 2nd sentence, the term “lawyer” is defined by a reference to Directive 98/5/EC. The amendment also addresses a specific situation in Sweden and Finland: a further specific category of other persons is defined by way of exception, whereby emphasis is on

– the equivalence of their “legal professional qualifications” to lawyers;
– national rules which permit that these persons practice in patent infringement and invalidity litigation like any other lawyer but not under the title governed by the directive.

These additional persons should fall under Article 48(1) UPCA. The distinction between lawyers under Article 48(1) UPCA, Rule 286.1, and European patent attorneys with appropriate qualifications under Article 48(2) UPCA, Rule 286.2, remains untouched.

This amended definition is designed presumably to clarify that European Patent Attorneys do not fall within the scope of the definition of “lawyer” however it is not immediately clear to IPcopy whether this definition succeeds in its purpose. EPAs who are also UK patent attorneys would seem to be knocking on the door of this definition. Maybe the way forward here is to take a step back, be a little less concerned about whether a certain class of individuals should or should not be in one definition or another and allow the users of the UPC to decide.

Bifurcation

Bifurcation is another topic that’s had a lot of airtime during the preparation of the Rules of Procedure, the concern expressed being the possibility of an “infringement” gap opening up between a decision in an infringement action at a local/regional division and a decision on revocation in the central division.

This concern was made worse after a provision in the 14th draft that allowed actions in the central division to be accelerated was deleted in the 15th draft. An amended version of this rule (rule 40(b)) has reappeared in the 17th draft and reads:

[The judge-rapporteur shall accelerate proceedings before the central division where]

(b) the regional or local division has referred the counterclaim for revocation to the central division and where the infringement action has not been stayed.

In the latter case, the judge rapporteur of the panel of the central division shall endeavour to set a  date for the oral hearing on the revocation action prior to the date of the oral hearing of the infringement action.

So under amended rule 40(b) the aim is to get to a decision on validity before the local/regional division reaches a decision on infringement. This should be good news for parties worried about being hit with an injunction before the validity of the patent can be assessed. However, I guess a lot will hinge on how the phrase “shall endeavour” actually plays out!

Court of Appeal

Under amended rule 220 the Court of Appeal has been given the power to give permission to hear procedural appeals.

Opt-out

The language of rule 5 has been tweaked slightly and it is now made explicit that an opt-out cannot be registered if there are any pending cases at the UPC and also if there have been any actions that have been concluded (rule 5.7). Similarly, a withdrawal of an opt-out if not possible if there is a pending national court case or any actions that have been concluded in the national court (rule 5.9).

As noted above the oral hearing to discuss the latest draft is scheduled for tomorrow. Due to space limitations only 70 organisations have been invited but the event will apparently be streamed on the Academy of European Law website www.era.int.

Mark Richardson 25 November 2014