The Chairs of the Preparatory Committee and Select Committee of Administrative Council of the European Patent Organisation have prepared a report on the latest state of play in the implementation of the Patent package published as this Information Note on 19 September 2014. The UPC Preparatory committee also issued an updated Roadmap in September and an Expert Panel of lawyers and judges was invited to advise the Preparatory Committee. 

Timetable revealed by Information Note and Roadmap:

Unitary patent (UP):  Committee foresees completion of its preparatory work by "first semester 2015"

Unified patent court (UPC): The Preparatory Committee foresees its work will not be completed before the end of 2015

  • Rules – These should be agreed by May 2015
    • End of November 2014 - Hearing of user organisations by team 1
    • December till February 2014 - Further review of the draft rules of procedure by team 1
    • May 2015 - Agreement on Rules Procedure in the Preparatory Committee
  • Court fees - A discussion on court fees is expected before the end of 2014. Following which, planning will commence for the consultation on fees to be launched in spring 2015
  • Practicalities – IT and facilities
    • IT – the procurement process is expected to commence now, in the "autumn of 2014". Work on system development and testing  is expected to be finalised during the last quarter of 2015.
    • Facilities – the provisions of facilities for each local and regional or central division is down to the state where court is located but must be in place by the time the UPCA is in force (see proposals for the management of this below). The Committee's work on the number and qualifications of local staff is expected to be finalised in March 2015
  • Judges and training – Language courses for judges are expected to start December 2014; a shortlist of candidate judges has already been approved by the Preparatory Committee in July 2014. Most judges are expected to be part-time initially and for there to be a reserve list to drawn on when case numbers increase. 
  • Management of final stages of UPC implementation – The Information Note refers to a proposal to ensure that all practical arrangements for the proper functioning of the UPCA are in place or are duly prepared in time, that there is a 3 to 6 month period before the UPCA enters into force agreed between Signatory States to allow for the provisional application of the institutional, organisational and financial provisions of the UPCA.  The Preparatory Committee is further investigating the possibility and willingness of the EPO to handle the task of registering applications for opt outs during the transitional phase: "It would initially relieve the new organisation from an administrative burden and minimize the risks of undesired effects of the opt-out system". 

The next meeting of the UPC Preparatory Committee will take place on 4 November 2014.

UNITARY PATENT

The Chairs of the Preparatory Committee and Select Committee of Administrative Council of the European Patent Organisation have prepared a report on the latest state of play in the implementation of the Patent package for the Council of the European Union. 

The report says that since the last information provided to the Competitiveness Council at its meeting of May 2014, the Select Committee has:

  • adopted in principle the draft Rules relating to the Unitary Patent Protection, with the exception of some technical aspects that require further discussion ("During its ninth meeting on the 24th of June 2014, the Select Committee has adopted inprinciple the Draft Rules relating to Unitary Patent Protection with the exception of some technical aspects that require further discussion").
  • continued work on the level of renewal fees which will have to be fixed by the EU participating Member States in the Select Committee on the basis of simulations of fees scenarios and their financial implications.

During the next meetings to be held until the end of this year, the Select Committee will concentrate its work on the financial and budgetary aspects of the implementation of the Unitary Patent Protection in particular on projections of scenarios for the level of renewal fees and estimations of costs for the administration of the Unitary Patent Protection. The SelectCommittee will also initiate discussions on the share of distribution of the renewal fees among the participating Member States.

The work of the Select Committee has to proceed in parallel to the work of the Preparatory Committee for the creation of the Unified Patent Court. The timetable of the work of the Select Committee needs to insure that the implementation of the Unitary Patent including the legal, administrative and financial measures are completed in due time before the entry into operation of the Unified Patent Court. The current roadmap of the Select Committee foresees completion of the work of the Select Committee during the first semester 2015.

UNIFIED PATENT COURT

The UPC Preparatory committee issued an updated Roadmap in September 2014 this month 

The Committee lists the following as its achievements over the last 12 months:

  • Received an expression of interest from over 1,000 candidate judges (both for legally and technically qualified judges) and organised a pre-selection process;
  • Set out the basic principles for the framework for the training of candidate judges; 
  • Opened the Training Centre for the Unified Patent Court in Budapest in March 2014 holding a two day conference to outline its function and future training provision; 
  • Published a brochure aimed at raising SMEs' awareness concerning the Patent package and its benefits; 
  • Published the 16th draft of the Rules of Procedure for the Unified Patent Court, along with a digest of the comments that were received in the written consultation on the preceding 15th draft of the said Rules; 
  • Published an interpretative note on the UPC website to assist users with developing a better understanding of the Preparatory Committee’s positions; 
  • Commenced appointment of specialists in IT procurement to compile the necessary specification for a call for tender for the UPC’s future electronic filing and case management system; 
  • Agreed and circulated a recommendation for minimum specification for facilities arrangements; 
  • Agreed to admit Croatia as observer to the Preparatory Committee; 
  • Announced the first regional division of the Unified Patent Court between Estonia, Latvia, Lithuania and Sweden; 
  • Announced five Signatory States who have completed their ratification process. These are Austria, France, Sweden, Belgium and Denmark; 
  • Initiated an early discussion on the arrangements for the transition from the preparatory phase to the operational phase of the new Court. This will be discussed at Committee meetings throughout 2015; 
  • Established an Expert Panel to advise the Chairman and working group co-ordinators on developing strategies on the UPC.

Its next tasks are: 

Legal framework (Coordinator: Mr Johannes Karcher (Germany): 

Rules of Procedure (UPC)

  • February to September 2014 - Study by team 1 of the draft Rules of Procedure and draft amendments 
  • End of November 2014 - Hearing of user organisations 
  • December till February 2014 - Further review of the draft rules of procedure by team 1 
  • May 2015 - Agreement on Rules Procedure in the Preparatory Committee 

Court Fees and recoverable costs A schedule for the Court fees, containing of a fixed fee as well as a value based fee above the defined ceiling of the fixed fee shall be established. Also a method for the calculation of the value of the case shall be defined. The question of court fees is also dealt with by the financial group. While the legal group will primarily assume the responsibility for the establishment of a schedule of the different fees, the financial group will determine the amount for those different fees of the court. A scale of recoverable costs shall be adopted, which shall set ceilings for such costs by reference to the value of the dispute.  A first draft of the Legal Group has been discussed by the Preparatory Committee in March 2014. Currently the draft is considered by the Finance Group. A second draft of both the Legal and the Finance Group is expected to be discussed in the beginning of 2015. The Financial framework group also adds: "While the legal framework group primarily will assume the responsibility for the establishment of a schedule of the different fees, the financial group will need to determine the amount for those different fees of the court. The level of the court fees is of significant importance to the users. It should therefore be easy accessible and structured in a separate part of the budget. The level of the court fees will be the object of a public consultation. It will be launched after the first assessment of the level of the court fees has been presented. 

A discussion on court fees is expected before the end of 2014. Following which, planning will commence for the consultation on fees to be launched in spring 2015. The budget for the first year of operation will then follow."

Mediation and Arbitration A report on the applicable rules is due in November 2014

Litigation certificate for patent attorneys Revised draft expected early 2015

IT system (Neil Francis – UK)

Preparatory work on functionality done - completed in December 2013. The procurement process is expected to take place in the autumn of 2014. Work on system development and testing  is expected to be finalised during the last quarter of 2015.

Facilities  (Coordinator: Mrs Anne Goedert (Luxemburg))

The Signatory States hosting a local, regional or the central division of the Court of First Instance or the Court of Appeal have affirmed their intention to have the appropriate facilities in terms of premises, furniture, offices and IT equipment and administrative support staff in place before the entry into force of the Agreement. The required number and qualifications of local staff shall be determined on the basis of which hosting countries shall be asked to provide these resources. The work on the number and qualifications of local staff is expected to be finalised in March 2015. The need for Headquarter agreements shall be analysed and if necessary preparatory work shall be conducted.

Human Resources (Coordinator: Mr Olivér Várhelyi (Hungary))

The organisation of the training of candidate judges, the preparation of the nomination of the first group of judges and the organisation of the initial pool of judges are the priority under this chapter. The preparation of it shall be conducted by the expert group, which will be assisted by an Advisory Panel, composed of experienced, active or former members of chambers of appeal or supreme courts or former lawyers with recognised competence in patent litigation. 

For legally qualified judges, training should consist of advanced courses in patent law and patent litigation, possibly combined with mock-trials and internships at patent courts in countries with highly specialized and highly experienced patent courts as well as courses on the UPC Agreement and the Rules of Procedure. 

For technically qualified judges training should consist of basic concepts of patent law relating in particular to the validity and basic concepts of civil procedure, as well as training on the UPC Agreement and the Rules of Procedure.

Language training for both legally and technically qualified judges should allow judges to work on files and participate in deliberations on a patent case in at least one language which is not their mother tongue.

Preparations have started with the first training programs expected to start before the end of December 2014.

It is assumed that in the early years, the UPC will work as much as possible with part time judges and (in particular in the local divisions with high workload, the central division and the Court of Appeal) a limited number of full time judges. Recruitment of the first judges of the UPC will aim at appointing a sufficient number of part- time and full time judges before the entry into operation of the UPC and to create a reserve list of judges who could be appointed should the case law increase more than expected. 

Appointment of judges shall be done by the Administrative Committee, once the UPC is established. It is the task of the Preparatory Committee to prepare the nomination process to the extent that the appointment will be possible without any difficulty. To this end a pre selection process was concluded in July 2014. . A provisional list of suitable candidates has been approved by the Committee. This will allow candidates to participate in the training program that is being established. 

Management of final stages of UPC implementation

The Preparatory Committee says it has initiated the work on how to organise the phase from preparation to operationalwhich marks a significant milestone. The Committee will need to ensure that all practical arrangements for the proper functioning of theUPC are in place or are duly prepared. The Committee has had exploratory discussions on twoissues: 

  • One possible option that is being explored is for Signatory States to agree to allow for the provisional application of the institutional, organisational and financial provisions of the UPCA and Statute during a period of three to six months before the UPCA enters into force. It would allow all legal texts and all decisions and appointments to be adopted in accordance with the relevant procedures. It would also allow for enough time to carry out procedures thoroughly, to avoid errors and to overcome unforeseen difficulties. 
  • The Preparatory Committee is further investigating the possibility and willingness of the EPO to handle the task of registering applications for opt outs during the transitional phase. It would initially relieve the new organisation from an administrative burden and minimize the risks of undesired effects of the opt-out system.

Chairman invites new Expert Panel to advise Preparatory Committee

The Chairman of the Preparatory Committee has invited a small group of experts to provide advice on the various different work streams. The new Expert Panel is set up on an informal basis and will advise the Chairman and his working group co-ordinators; in this role Expert Panel members will participate in their personal capacity.  Their work will not in any way affect or impede the structure that is already in place on formal consultations or the decision-making function of the Preparatory Committee itself. 

Members of the Expert Panel Lawyers:Kevin Mooney (UK)Willem Hoyng (Netherlands)Winfried Tilmann (Germany)Pierre Véron (France) Judges:Christopher Floyd (UK)Colin Birss (UK)Robin Jacob (UK)Marina Tavassi, (Italy)Klaus Grabinski (Germany)Patent Attorneys:Eugen Popp (Germany)Christof Keussen, (Germany)Patrice Vidon (France)Business Representatives:Tim Frain (UK)Udo Meyer (Germany)