Countdown to the Unified Patent Court, Part II: The Timelines

On February 17, 2023, Germany ratified the Agreement on a Unified Patent Court. To help you prepare for UPC, we offer a series of five articles covering the most important aspects of UPC. While Part 1 focused on his designated UPC Judge, this Part 2 deals with the timeline governing proceedings at the UPC.

Timeline

Prepare for a team with sufficient redundancy at all levels

The Agreement on the Unified Patent Court (UPCA) makes no mention of the timeline that parties must adhere to when filing a lawsuit in the UPC. However, the UPC’s Rules of Procedure (ROP) fill this void and provide a very ambitious regime that respects deadlines. Pursuant to Rule 9.2, the Court may disregard any procedure, fact, evidence or allegation that a party has not filed or submitted in accordance with the deadline set by the Court or the ROP. If a party relies on late-filed facts or allegations and wishes to convince the court to include such facts or allegations in the proceedings, it is reasonable to assume that at least a very detailed explanation is required. is. The problem could not have been done with reasonable care in the early stages. However, even if a satisfactory explanation could be provided in this regard, it follows from Rule 263.2 that the court would be unduly precluded in the action of the other party from admitting such late-filed facts or arguments to the proceedings. If so, we may still disregard such facts or claims. its action.

Furthermore, it is at the discretion of the court to grant or deny a request for an extension of time (see Rule 9.3). Many appointed UPC judges are mandated to grant final oral hearings on issues of infringement and first-instance validity, so a very rigorous approach when it comes to requests for such extensions of time. It publicly states that it applies. Otherwise, one year cannot be met. Simply put, a term extension may be considered if the lead attorney is hit by a train, but not if he is hit by a car. Yes (granted rule 301). Lastly, judicial leave (granting Rule 342) must not interrupt the period set by the court or the rules (granting Rule 300 lit. (h)).

In view of the above, parties should carefully select their legal service providers to ensure that adequate legal recourse is always available, especially during Continental European holiday periods. A legal combat team may spearhead two silverbacks or more, as they must be present at all levels.

First-instance proceedings (infringement in main complaint)

Proceedings before the court of first instance consist of three stages: (i) written proceedings, (ii) interim proceedings which may include interim meetings, and (iii) oral proceedings which take place one year later.

The written procedure shall, in principle, consist of four main submissions:

• Statement of claim (Rule 13)
• Statement of Defense (Rules 23 and 24)
• Reply to Statement of Defense (Rule 29)
• Rebuttal to Reply (Rule 29)

The deadline system during the paperwork is rather complicated. In summary, if a counterclaim of revocation is filed, the written proceedings must be completed within 9 months for him, and if the defendant for any reason (such as cost or strategic reasons) decides not to do so, he will have 6 months. Must be completed within a month. It goes without saying that in most cases such counterclaims are likely to be filed.

Once the statement of claims is served, the clock runs in favor of the patent owner as defendants are put under a lot of time pressure by the ROP. First of all, the defendant must meet her one-month deadline, during which the defendant may file preliminary objections pursuant to Rule 19 regarding: 5 applies to patents in litigation. (b) the authority of the department indicated by the claimant (Rule 13.1 lit (i)); (c) the language of the statement of claim (Rule 14);

Within a further two months (three months in total), the defendant must file a defense. This submission shall include, inter alia, the evidence relied upon, the reasons for the failure of the action, the claims of law, any claims arising from the provisions of Article 28 of the UPCA, and, if necessary, any objection to the complainant’s proposed interpretation of the claims. shall include (Gives Rule 24). If the justification contains an allegation that the patent in litigation is invalid, the justification shall contain a counterclaim against the patent owner seeking revocation of the patent in accordance with Rule 42. Build a defensive case and no more day. Any argument or fact filed by the defendant after this three-month deadline faces a significant risk of being ignored by the court for late filing.

After service of the affidavit, the judge-rapporteur shall, after consultation with the parties, set a date and, if necessary, a time for an interim conference, and set a date for the oral hearing.

Within two months of service of the defense, the claimant must file a response containing the defense to the counterclaim seeking revocation and, if applicable, a petition to amend the patent in litigation. . This means that plaintiffs are under pressure, and the tight deadlines set out in the ROP do not adequately prepare their cases and are caught off guard by new factual evidence, new interpretations of claims, or new connections. It means that it is a strong headwind for the poked plaintiff. Prior art filed by defendant.

A complete deadline system for written procedures can be visualized as follows:

During the intermediate proceedings, the judge-rapporteur shall make all necessary preparations for the oral hearing. In particular, an interim conference can be held with the parties. Intermediate meetings will be recorded. The record will not be made public and will only be available to the parties or their representatives after the hearing. However, it is highly likely that the recording will be made public, as representatives of the parties will likely cite the recording in future submissions. The interim proceedings shall be completed within three months after the completion of the written proceedings.

A year later, an oral hearing is held. Also, this hearing shall be recorded and the presiding judge shall aim to complete the hearing within one day. As with the Court of Justice of the European Union, the presiding judge can set a deadline for the parties’ oral submissions before oral proceedings. Decisions on the merits may be made immediately after the conclusion of the oral proceedings and written reasons may be provided at a later date. Alternatively, the Court shall issue a written decision on the merits within six weeks of the oral hearing. Therefore, he may have an enforceable decision within 14 months of filing the complaint. It remains to be seen which enforcement guarantees will be imposed on the prevailing plaintiffs by the UPC’s various regional divisions. To that extent, the following rule is likely to apply: The more extensive the court order requested as regards the territory, the defendant, and the accused product, the greater the security of its enforcement. A request for a specific court order may be the rule (eg, injunctive relief with respect to Accused Product X sold in UPC Member State Y by Defendant Z).

interim injunction proceedings

Not surprisingly, the ROP does not provide a fixed timeline for preliminary injunction proceedings. But the point of the rule is clear. Requests for preliminary injunctions must be handled in an expedient manner so that even ex parte remedies are available in special circumstances. It is reasonable to assume that the first interim injunction proceedings will be completed within a few months, and in any case within half a year.

Appeal proceedings

If the UPC proceedings of first instance are characterized as a rocket docket, the same applies to the UPC appeal proceedings. Here, the timeline is tighter, with a final decision on infringement and validity expected within a year. This is particularly important because judgments rendered by appeals courts are generally enforceable without the need to provide an enforcement bond.

summary

If the UPC can keep up with the timelines above, it will be the fastest patent trial court in the world. The speed of the procedure requires careful planning and workflow management on both sides.

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Author: Anton Machuca