“Maximilian Haedicke said ‘bumps in the road’ are now a thing of the past and ‘there is a clear path ahead’. But he added that challenges remain.” One is how to create and further develop laws.”
Fordham IP Conference Panels on UPC
Three judges from the new Unified Patent Court participated in a panel discussion on the new system at the Fordham IP Conference on April 13th.
Introducing the panel, Myles Jelf, Bristows LLP, London, emphasized that the UPC is a completely new court that will have a significant impact on patents around the world. He emphasized that it is an amalgamation of existing procedures. As we stand here today, we have no precedent, no case law, no custom as to what those proceedings will be. ”
rocky road
Maximilian Haedicke of the Albert Ludwig University Freiburg, member of the UPC Central Division in Paris, summarizes the developments of the last 50 years that have led to the UPC, starting with the 1973 European Patent Convention and the Community Patent Convention. Various initiatives failed before his UPCA breakthrough in 2013. The new court will finally open on his June 1, 2023, after Germany ratified it earlier this year.
Haedicke said the “hard road” is past and “the road ahead is bright”. But he added that challenges remain. We need to establish a consistent legal system, and I think we’ll get there eventually. We are not following precedent in one jurisdiction. All laws must be resolved and put together again. ”
He added that other challenges include how judges and departments work together, the relationship between experts and technical judges, deliberations between judges, and an innovative case management system.
Evidence rules
One of the most important characteristics of courts is how they handle evidence. Rian Kalden, a member of his UPC Court of Appeal in Luxembourg and the Hague Court of Appeal in the Netherlands, explained that the UPC’s provisions on evidence stem from his EU Enforcement Directive.
“This is a front-loading system. Anything you request from the court must be accompanied by all the evidence you have at the written stage. You can ask the parties to do so,” said Calden. Generally, no new facts or evidence can be submitted on appeal. ”
Calden discussed the principles behind the rules of evidence, including the right to be heard, protection of confidential information, proportionality and impartiality, and free evaluation of evidence. “It’s not a fishing expedition. Applicants must establish the facts and identify the evidence they are requesting, and can only obtain evidence relevant to the current stage of the proceedings,” she said.
Kalden says that as long as the request is specific, it can ask for information if details are not known (for example, if you need information from someone who holds a particular role in your company but you don’t know their name). Such). She also emphasized some of the strict time limits in the UPCA, such as the commencement of proceedings.
Opt-out trends
One aspect of the new system, which has been in force since March 1st, is the ability to opt out of the jurisdiction of the courts for European patents and patent applications. The latest court data shows that there have been about 14,000 such requests (out of an estimated 1.5 million eligible patents and patent applications).
Edger F. Brinkman, member of the UPC Local Division at The Hague, said that the “UPC or not” decision is an important decision for patentees, with arguments both for and against. This is a major blow to competitors with infringing products. Save on legal fees and get rid of patchwork issues. Judges are intended to be experienced and knowledgeable. However, there is no judicial precedent yet, and in some cases patchwork is preferable.”
He pointed out that there is speculation about opting out of basic and secondary patents, especially in the pharmaceutical sector, divisions and SEPs.
open question
One of the big questions about the new court is its relation to EU law and possible referral to the CJEU. Anne-Charlotte Le Bihan, of Bird & Bird AARPI in Paris, stressed the tension that unitary patents are governed by EU rules, while courts are regulated by international treaties that are not part of EU law. It pointed out.
The big issue, she said, concerns substantive patent law. The “common belief” is that the CJEU has no authority, but Le Bihan believes it does have authority in a “common commercial policy” encompassing the commercial aspects of intellectual property, including the part dealing with substantive patent law. pointed out that it had previously claimed that “Whether she refers these questions to the CJEU is up to the judge,” she said.
Another issue was raised by panelist Miquel Montañá of Clifford Chance LLP in Barcelona. He pointed out that one of his interpretations of Article 89 of the UPCA is that it requires ratification by the UK, which has decided not to join the scheme. He raised the possibility that this could be declared illegitimate by judges and other officials of the court. “Politicians have tried to keep the issue under wraps,” Mikel Montagna said, adding.
The panel was completed by Giovanni F. Casucci, EY Studio Legale Tributario, Milan, and Klaus Grabinski, President of the UPC Court of Appeal, Luxembourg. Grabinski rejected the argument that the UPC is obliged to refer questions about substantive patent law to the CJEU. This means that the UPC is in the same position as the national courts. ”
Grabinski also noted the potential for infringement and divergence of validity, as is currently happening in the German system, stating: He said there are exceptions, for example when infringement is brought to different departments and there are also counterclaims. They try to decide as soon as possible, but they risk being slower than infringement cases. However, you may decide whether to wait for a revocation decision based on the likelihood of success in your revocation action. ”
New Start
Haedicke said there are many reasons to be optimistic about the new system. Challenges are there to be overcome. ”
The judge, as stated by Grabinksi, agreed that: National laws and practices are irrelevant until they are enacted. ” added Brinkman.
Grabinksi, who has been leading the training of UPC judges in Budapest, Hungary for the past few months, advises them: Think UPC! ”
35th The Fordham IP Conference was held April 13-14 in New York. Apart from UPC, topics covered included FRAND, validity, metaverse and NFTs, artificial intelligence, injunctions, forum shopping and extraterritoriality, and IP diversity.
