FICPI Position Paper on

the Unitary Patent and the Unified Patent Court

FICPI is the International Federation of Intellectual Property Attorneys and is representative of the profession in private practice throughout the world, including national Patent Attorneys, European Patent Attorneys and Patent Agents in the EPC Member Countries, but also Patent Attorneys in all major countries outside EPC Member Countries. FICPI Members advise, represent or act on behalf of SMEs, universities and single inventors, but also large industries from all around the world.

A - Introduction

FICPI is supportive of an effective patent system which is balanced for the users. However, the patent system should also be acknowledged by the general public as being beneficial to society as a whole. An effective patent system should therefore award the innovator for disclosing new inventions to the public and, if possible, for bringing innovations to the market. This award (i.e. the patent exclusive rights) must enable the innovator to efficiently prevent competitors to profit from the patented invention without approval of the patentee. This right, however, must also be balanced in view of the contribution of the innovator and in view of the right of competitors to efficiently combat unjustified threats based on a patent.

FICPI has therefore followed with interest the EU Commission initiative in establishing a system for patent litigation in the EU. It was important to achieve the political commitment at the European Council on 3/4 Dec. 2009 with the “Conclusions on an enhanced patent system in Europe”[1], which – besides very detailed suggestions for a future “European and EU Patents Court” – also included the concept of a EU Patent.

FICPI has noted the later developments, including the fact that a common agreement within the EU was not possible for the project of the EU Patent in 2010, which in turn led to the development of “Enhanced Cooperation”. FICPI also noted the “Statement of Position by the Advocates General” (presented on 2nd July 2010) and the Opinion 1/09” of the Court of Justice of the EU (CJEU) of 8 March 2011 concerning the proposed European and EU Patent Court Agreement.

FICPI has always been and continues to be a supporter of the initiative of the European Commission in promoting reform of the patent system in Europe. FICPI has also followed with interest the concept of a uniform patent right in the European Union (previously the “Community Patent”, then the “EU Patent”, now the “Unitary Patent”), i.e. a patent right which has the same effect in each EU Member State where it is valid. FICPI was one of the organisations that responded to the Green Paper and to the proposals for a Regulation for the Community Patent (CP) and understands that its contributions, which was one of the most detailed, was particularly well received. The contents of the previous submissions to this topic (especially the Position Paper on the draft CP Regulation and the FICPI response[2] and contributions[3] to the questionnaire and user inquiry “On the patent system in Europe” launched by the European Commission Internal Market and Services DG in 2006) are also fully relevant to the present position paper.

FICPI has voiced its strong opinion that a practical and well balanced way to create the future patent system for the Community should be based on existing law in the Community, i.e. the EPC, the IP Enforcement Directive[4] and the “Brussels” Regulation[5], and the existing operating structures and proceedings (provided by the EPO and national (or regional) courts already specialised in IP matters, e.g. the courts already responsible for Community Trade Marks and Community Designs) and should obviously be in line with other legislation, including TRIPS and the Lisbon Treaty.

FICPI had also provided detailed comments and proposals from the practitioner’s point of view to the various previous proposals for a Community Patent Regulation and for the future EU patent litigation system. FICPI has always advocated and supported a concept which provides a strong EU Patent which brings to an innovator an easily and reliably enforceable right to stop infringers throughout the entire European Union. The EU Patent has to be a tool that is specifically tailored to bring as much benefit as possible to European society. The legal environment for the EU Patent, especially the enforcement system, on the other hand, must ascertain a fair balance between the right of the owner of the EU Patent and third parties who have to respect the EU Patent.

In view of the recent political developments in the present projects, FICPI’s aim is to deliver input to the current proposals based on legal but also practical considerations, especially because FICPI members will represent the widest variety of users of this system (both applicants/patentees and “third parties”) on a daily basis, once the system is in force.

The present FICPI Position Paper is drawn to the actual status of legal proposals for the Unified Patent Court and draft Statute[6] (the “Unified Patent Court”; UPC) and for a Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection[7] (the “Unitary Patent”; UP).

B – General Statement

FICPI believes that the present projects have been prepared with excessive haste and suffer from a number of severe legal and practical deficiencies, partly because there has been inadequate consultation with the stakeholders of the patent system, which is essential to robust and effective law making.

FICPI therefore considers that it would be a mistake to sign and enforce the planned legislation documents in their current form.

FICPI therefore strongly urges the authorities in charge of enforcing this project to pause and organize a proper user-consultation process that would allow the major roadblocks identified by FICPI (and detailed below) and other organizations to be addressed. FICPI would be very willing to participate in such consultation process.

In the limited time available, FICPI has intensively studied the numerous consecutive proposals in its Study and Work Commission (CET) and has identified severe legal and practical deficiencies in these proposals, which would be detrimental to the future system, and to the image of the IP system in general, if these concepts were enacted and enforced in their present status.

FICPI shares the impression of many other user groups that the present matter is being handled much too quickly, with important issues not thought through and not publicly debated (especially with the stakeholders of the system) as they should be. Problematic and therefore bad law will result.  As FICPI will show hereinafter, important provisions in the present proposals, e.g. with respect to the competence of the divisions, fee structure, languages, amendment procedure, and of course, the Rules of Procedure of the Court, are not properly defined or formulated to allow an overall assessment of the project. Renewal fees too have not been properly explored. And there is still strong objection to the definition of the effect of a Unitary Patent (see i.a. 1.2.2. below).

C – Major issues

- Although generally supporting a patent system with unitary effect in Europe, FICPI notes the renunciation to a EU-wide agreement on such projects, but still believes that an approach which would receive the acceptance of all EU countries is possible and desirable.

- An appropriate user-consultation process, much like the one engaged by the EU Commission when contemplating amendments to the Trademark system in Europe, should be provided before considering the signature of any legally enforceable instrument in this field.

- The mechanism for providing of patent translations according to the UPTR, as well as the legal effect of such translations e.g. according to Art. 70 (4) EPC, should be defined.

- Should the UPR principles be retained, this Regulation should provide for the possibility for a patentee to file voluntary translations to a competent authority which shall officially publish these translations, to overcome the weakening of the untranslated patent right as explicitly stipulated in the draft[8].

- The details of the Rules of Procedure should be made available and publicly debated together with the provisions of the UPC Agreement before any enforceable instrument is signed.

- The linguistic system of the central division as provided by the UPC should be brought in line with the fundamental principles of Union law, as requested by the CJEU Advocates General.

- The UPC Agreement should include a suitable scheme for the ease of its revision whenever it becomes necessary, e.g. by a qualified majority decision process for many of its provisions, unanimity being required only for central provisions of the Agreement.

- The UP system should provide that the request for unitary effect is filed in sufficient time before grant of the European Patent, so that the existence of the unitary effect is notified to the public already in the publication of the granted patent.

- The unitary effect of the patents should be safeguarded, including e.g. for any post-grant limitations to the patent right. In this regard, the UPR draft procedures should be amended to acknowledge possible amendments to the Unitary Patent after grant.

- An appropriate definition of the term “dispute” in Art. 4(1) and (2) of the current UPTR draft should be provided.

- For effectiveness of the system, the UPC Agreement should provide whenever possible that a technically qualified judge is present in any first instance panel, whether in a local or a regional division[9].

- The competence of the UPC to hear questions of ownership in inventions or patents should clearly be provided.

- The deficiencies of the proposed system with respect to its connection with the administrative proceedings of the EPO, as underlined by the Advocates General of the CJEU, should be addressed.


APPENDIX – DETAILS ON ISSUES

1. The Unitary Patent (UP)

1.1. General

FICPI agrees with the basic principle of Art. 3 of the UPR draft, namely to provide a patent with uniform effect in the participating Member States. This should be the basis of all further developments. In fact, it was always the understanding of FICPI that the EPC was already intended to foster the development into this direction – based on the harmonisation of the material patentability requirements and revocation grounds[10] and on the definition of the extent of protection[11]. It was therefore surprising to note the rationale of the CJEU in case C-4/03[12] that the courts of the Contracting State on whose territory the registers are kept should “apply their own national law when deciding on the validity and effects of the patents which have been issued in that State”, even if they decide on the validity of centrally granted European Patents. Even though it was acknowledged that “given the specialised nature of this area, a number of Contracting States have set up a system of specific judicial protection, to ensure that these types of cases are dealt with by specialised courts”, the fact that – at least for European Patents – the rules for validity and revocation are mandatorily the same for all Contracting States, namely the relevant Articles of the EPC, was not appropriately taken into account.

If, however, such uniform effect for European Patents is – at last and explicitly – established by way of EU Regulation, this is definitely a major step forward in the European patent system.

FICPI notes, however, that with the nature of this project in the form of an “enhanced cooperation” (rather than a common EU approach of all 27 Member States) some legal stipulations in the current Regulation drafts as well as the connection to the UPC Agreement are problematic, because credit has to be paid to the fact that in one project all Member States can participate whereas the other project has to be developed according to the – limiting – rules of “enhanced cooperation”[13]. For the sake of a strong and sound EU patent system, inclusion of all EU Member States in the planned EU Regulation set would be highly desirable. Moreover, such an “enhanced cooperation” prima facie appears to be against the language regulations in the Lisbon treaty[14], which states that with respect to IP matters language issues can be decided upon only by consensus. An “enhanced cooperation” between several but not all countries/Members States, including language agreements clearly does not fulfil such principle. The idea of the European Patent system (EPC) was to create a common patent law[15] whereas the current drafts for the UPR will lead to even further differences for different member states, for example in reasonable compensation (knowledge of infringement or not, depending on e.g. the language (see item 1.3.3 below).


1.2. The Proposal for a Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection (“Unitary Patent Regulation draft”; UPR draft)

1.2.1. Request for unitary effect

According to Art. 12(1)g of the UPR draft, the patent proprietor has to request for unitary effect “no later than one month after the mention of the grant” of the European Patent. On the other hand, Art. 4 of the UPR draft states that the UP “shall take effect in the territories of the participating Member States” on the date of the grant of the European Patent. There appears to be an inconsistency with such an arrangement, both legally and practically.

It is not understandable how the UP can have unitary effect before it is requested (specifically, since this request can, but does not have to be made). On the other hand, the public cannot be informed about the effect before the request has been appropriately processed at the European Patent Office (EPO) which will be at least more than a month after the date of grant. What will happen to actions already taken with respect to the European Patent in the meantime (e.g. initiation of litigation, requests for revocation, for declaratory judgments or for prior user rights, etc.) if the European Patent suddenly turns into a UP?

Moreover, the need to file a request for unitary effect after grant makes clear that the European Patent is not granted as a UP but is converted into a UP after grant (although with retroactive effect). This, however, stands in contrast to the legal basis for the UP under the EPC, Art. 142 EPC[16] (“Unitary Patents”). Art. 142 EPC[17] clearly requires that the European Patent has to be “granted” for the number of specific Member States where the patent should have unitary effect. For logical reasons, it follows that the intention to have a European Patent granted with unitary effect must be present before the grant takes place. With such hypothesis, FICPI is of the opinion that the request for unitary effect should be filed before the grant and the grant has to be performed by acknowledging this unitary effect. For practical reasons, such a request should preferably be filed when responding to the Communication according to Rule 71 (3) EPC. This would allow proper examination and handling of the request and the provision of information for the public of the unitary effect on the patent document (the B1 publication).

FICPI therefore suggests to change the present draft UPR to provide that the request for unitary effect should be filed in sufficient time before grant of the European Patent, preferably at the latest when responding to the Communication according to Rule 71 (3) EPC, so that the existence of unitary effect is already notified to the public in the B1 publication.


1.2.2. Effect of the UP

Many user groups have criticised that the draft UPR contains stipulations concerning the effects of the UP[18], either because there should be no referrals to the CJEU in infringement matters or because of possible differences in the effect (or limitations) in the UPC Agreement or in different Member States.

Whereas FICPI cannot see a realistic alternative to a certain involvement of the CJEU also in questions related to infringement cases (see below in the comments to the UPC Agreement) when a pan-EU harmonisation of patent jurisdiction should be achieved within the EU, FICPI realizes that there could be problems in practice if the effects (and limitations) differ between the UPR and the UPC Agreement. For example:

- the “Bolar” exemption[19] has been implemented differently in different Member States;

- prior user rights are foreseen in the UPC Agreement draft[20] but not in Art. 6 to 9 (or elsewhere) in the UPR draft;

- the effect of prior national patent or utility model rights are not regulated in the present UPR draft[21] but could eventually be relevant under national law[22].

FICPI therefore strongly recommends that the authorities involved in drafting the final versions of the UPR and the UPC Agreement safeguard the unitary effect of the patents, including any limitations to the patent rights.

1.2.3. Amendments of the UP after grant

Another practical issue arises from the need to acknowledge changes to the UP after grant, e.g. after opposition proceedings that resulted in an amended patent or after limitation proceedings. The present UPR draft lacks procedures for such cases. FICPI therefore suggests providing at least in Art. 12 (1)b of the UPR draft procedures[23] for acknowledging amendments of the UP after grant.


1.3. The Proposal for a Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements (“Unitary Patent Translation Regulation draft”; UPTR draft)

1.3.1. The definition of a “dispute” is unclear

Art. 4 (1) of the UPTR draft regulates that “in the case of a dispute” relating to a UP shall provide at the request of an alleged infringer a full translation of the UP[24]. A “dispute” in the meaning of Art. 4(1) UPTR draft is obviously not synonymous with “legal proceedings”; legal proceedings are referred to in Art. (2) UPTR draft as a specific form of a “dispute”. It is therefore not clear when a dispute is present between the patent proprietor and an alleged infringer. Is the receipt of a warning letter sufficient to entitle an alleged infringer to request such translation? Or does a patent proprietor have to provide a third party (or at least any economic operator) with a translation upon any request of such a party wherein the third party alleges a “dispute”?

FICPI therefore recommends including an appropriate definition of the term “dispute” in Art. 4(1) and (2) of the UPTR draft.

1.3.2. The provision of the translation in the case of a dispute

In the case a patent proprietor has sent a warning letter to an alleged infringer (and therefore a dispute is, in any way, present): what is the consequence if the translation is not provided to the alleged infringer? There is no term given for such provision of translation (or a reasonable time range). Moreover, what happens if the translation is of poor quality (even though not carried out by automated means as currently prescribed in the UPTR draft) and objected to by the alleged infringer (or questioned by the court)? The question of the general (legal) status of such translations arises. Can the patent proprietor correct the translation? Up to which point in time (also in the course of legal proceedings[25])? What happens if the correction (re-)broadens the scope? What if such objection because of poor quality is not justified? Can the translations be “corrected” ad infinitum, even in the course of court proceedings, thereby possibly affecting the assessment of infringement by equivalence? Has the translation to be identical in later filed cases? There is no legal status for such translation foreseen in the current UPTR draft, neither to the benefit of the patent proprietor not for legal certainty for the alleged infringer or the court hearing the dispute. FICPI recommends to define the details of provision of such translations in the UPTR, including stipulations concerning the legal consequences of such translations, e.g. (but not necessarily) according to Art. 70 (4) EPC.


1.3.3. Overcoming the weakened patent protection according to Art. 4(4) UPTR draft

Art. 4(4) UPTR draft currently stipulates that in the case of a dispute concerning a claim for damages, the court hearing the dispute shall take into consideration that the alleged infringer[26] may have acted without knowing or having reasonable grounds to know that he was infringing the patent before having been provided with the translation thereof. It is evident that this stipulation can lead to a weakened patent right in a participating Member State, so that claiming damages can become difficult if not impossible when such translations have not been provided before infringement has been initiated. The same rationale could be applied by a court with respect to the timing of preliminary injunctions which could be generally prevented by such excuses or at least enacted with long transition periods for the alleged infringer (e.g. six or twelve months) for reasons of equity.

A patent proprietor could be willing to accept such a weakening of the patent right (e.g. as a counterpart for the lower costs for renewal and the removal of translation costs). However, other patent proprietors may prefer to have a strong patent protection. Accordingly, means should be available for overcoming the potential weakening prescribed in Art. 4(4) UPTR draft, if a patent proprietor wishes to do so. However, such means or measures should be balanced and appropriate. In view of the currently present system with respect to European Patents, it is clear that an official publication of appropriate translations would be a way to prevent this potential weakening, provided that legal stipulations with respect to their legal effect are foreseen (see item 1.3.2. above).  

FICPI therefore believes that the final version of the Unitary Patent Translation Arrangements Regulation should include the possibility for a patentee to file voluntary translations to a competent authority which shall officially publish these translations to overcome the potential weakening of the patent right as stipulated in the draft[27]. FICPI further urges the authorities to define unitarily the effect of patents granted and translations filed, independent of the language in which it has been granted.


2. The Unified Patent Court Agreement (UPC Agreement)

2.1. General

The present proposal is – due to the effort of the European Commission in cooperation with the relevant user groups, including FICPI – significantly improved compared to previous concepts, such as the Community Patent Court[28] and the European Patent Litigation Agreement[29]. FICPI has voiced constructive proposals for improvements of these previous concepts in the past.

FICPI is also pleased to note that many of these central points of criticism it raised in the past towards previous concepts and proposals for EU patent litigation systems have been properly addressed by the most recent proposal for the present Unified Patent Court (UPC) Agreement draft, especially:

–        the competences of the patent courts (Art. 15 (1) (a) )[30], and

–        the right of qualified patent attorneys to represent parties before this court (Art. 28 (2) Draft EEUPC Agreement)[31].

FICPI also notes that the UPC Agreement draft contains many positive details necessary for a high–class patent jurisdiction in the European patent system.

However, due to the current political circumstances, the UPC Agreement is still set up as an international (although limited to EU Member States) Agreement, like for instance the EPC. FICPI questions whether the concept of the present UPC Agreement as an “EPC like”–Agreement is or not be the appropriate legislative format for the future EU patent court system. The introduction of this court system by a EU Regulation could be a more appropriate legislative format should all EU Member States be taken on board of this system. The negative aspects of the “EPC-like”-Agreement nature are specifically apparent when amendments to the Agreement are sought (see item 2.2 below) and possibly enforcement.

The present draft comprises the UPC Agreement and the Statute. However, many important details which are essential for functioning of the court system must be provided by the Rules of Procedure for which only a rough (although very comprehensive) “Preliminary list of topics” is presented. Without knowledge of the Rules of Procedure, an evaluation of the practical suitability of the UPC Agreement is not possible. Accordingly, also a political decision in favour or against the present proposal in a reasoned manner is not possible.

FICPI is therefore of the opinion that the details of the Rules of Procedure have to be disclosed before the UPC Agreement is made available for signature.

2.2. Future Amendments of the UPC Agreement

2.2.1. Amendments of “EPC-like” Agreements in general

A basic problem with respect to “EPC like” Agreements for IPRs is when it is desired to amend such an Agreement. Amendments may be necessary for various reasons: modernising the system; overcoming shortfalls of the original wording of the Agreement; introducing changes which are politically desired, etc.  However, making amendments to such an “EPC-like” Agreements may be complicated and lengthy, even for amendments which are not heavily disputed: It is worth to remember in this connection that it took more than seven years until the changes of the “EPC 2000” (dated 29 Nov. 2000) came into force (13 Dec. 2007), although the amendments were not problematic or significantly controversial at all! Also this shows that this format is not advantageous for a court system which, by its very nature, will at some stage need to be amended for further development. It may also be difficult to enforce obligations coming from an “EPC-like” Agreement posed on the Contracting Member States.

2.2.2. Amendments of the UPC Agreement

In the current draft for the UPC Agreement, the following stipulations for possible amendments of the Agreement are provided (in Article 58d):

-        Art. 6 and 15a of the UPC Agreement may be revised upon consultation with users after 6 years or once 2000 infringement cases have been decided; and

-        the UPC Agreement may be brought in line with an international treaty relating to patents or Union legislation by unanimous decision of the Contracting Member States.

No other stipulations for revision are contained in the UPC Agreement draft. Of course, a Diplomatic Conference could possibly change the Agreement; however, with unanimous decision (since no other possibilities are foreseen).

FICPI believes, however, that other revisions to the UPC Agreement may be necessary in the future to comply with the evolving needs of the UPC system and of the users of this system. It has also to be stressed that for a high quality patent litigation system as the one that should be established by the UPC Agreement delays for the introduction of necessary changes are not acceptable (e.g. delays as for the enforcement of EPC 2000!).

It should not be forgotten that the previously proposed EPLA was regarded as being “present for signature” by some stakeholders in 2004. Then it was established that the EPLA was not in compliance with the IP Enforcement Directive. It took some time until an appropriate amendment for the EPLA was presented. According to the present UPC Agreement draft, bringing the UPC Agreement into conformance with “international treaty relating to patents or Union legislation by unanimous decision of the Contracting Member States” (as the IP Enforcement Directive would have been) would require unanimous decision of all Contracting Member States (including appropriate “coming into effect”).

Accordingly, FICPI urges the authorities involved in drafting the final version of the UPC Agreement to include a suitable scheme for revision of any of the Articles of the UPC Agreement to enable a fast revision e.g. by a qualified majority of the Contracting Member States (for most Articles) or unanimously (for central stipulations of the UPC Agreement), if such revision is regarded to be necessary, especially, if appropriate, after a consultation with the users of this system.

2.3. The composition of the panels in the Court of First instance

FICPI observes that the current draft for the UPC Agreement stipulates[32] that the panels of the first instances of the local and regional divisions shall sit in a composition of three legally qualified judges and only the central division shall sit in a composition of two legally qualified judges and one technically qualified judge when dealing with infringement and related issues.

However, FICPI believes that a high quality patent litigation system requires an appropriate understanding by the panel of the technical issues at stake already in the first instance, maybe even more so. This may not be guaranteed by three legally qualified judges without technical qualification. Many Member States already have panels with technically qualified judges (i.e. judges having a technical university degree, preferably in the general technical field of the invention in question (mechanics/physics, chemistry, electronics)) deciding in patent litigation matters and have good experience with such panels. Especially in first instance panels for infringement issues (and related issues, such as prior user rights, counterclaims for revocation, etc.), technical competence of the panel is of high benefit to the system. Having one technically qualified judge and two legally qualified judges[33] appears to be a proper panel composition for the intended practical aims of the UPC.

FICPI therefore believes that, for the stake of consistency and to ensure technical competence of the panel, a technically qualified judge should present whenever possible in any first instance panel, whether in a local or a regional division according to the UPC Agreement[34].

2.4. The Central Division

The language regime of the central division of the previous proposal (i.e. the EEUPC Agreement[35]) has been objected to by the Advocates General[36] as “delicate”. This linguistic system appeared to be “unacceptable with regard to observance of the rights of defence”[37] for the Advocates General. Since the linguistic system was obviously not changed in principle compared to the EEUPC Agreement, an appropriate amendment seems to be necessary to comply with a “fundamental principle of Union law”[38].

FICPI therefore urges the authorities in charge of drafting the UPC Agreement to bring the linguistic system of the central division in line with the fundamental principles of Union law as requested by the Advocates General.

The concept of a central division with respect to the linguistic system and the language skills of the judges could also have practical problems in hearing patent matters as a first instance court (especially in appropriate hearing of witnesses, in gathering evidence, etc.).

FICPI also notes that the language regime currently suggested in the UPC Agreement for the central division prescribes as the language of the proceedings the language of the patent. This is significantly worse than the current language regime in opposition proceedings before the EPO (and appeal proceedings thereto) in which any one of the Official languages of the EPO (GB, FR, DE) can be used by the parties, independent of the language in which the patent has been granted.

FICPI urges the authorities in charge of drafting the UPC Agreement to bring the linguistic system of the contentious proceedings before the Courts at least as flexible as the one provided under the fundamental principles of the EPC.

2.5 Funding and Fees

The UPC needs to be established as an independent court system. In contrast to the Community Design, Trade Mark and Plant Variety systems which rely on established local structures with virtually no additional costs, the creation of the UPC requires considerable investments, both for the central division as well as for the local divisions. Even if local divisions can be composed of one or two local judges, at least one judge from the pool of judges needs to be financed and specific infrastructure must be established. On the other hand, the UPC should be self-financed. This raises the question of how such a system should be able to attract highly competent judges but nevertheless be affordable, in particular for SMEs, with respect to court fees.

FICPI believes that the future UPC system must be of highest quality but also be affordable for the users, having in mind that a significant number of patent litigation cases occur between SMEs, even between SMEs from the same Member State. The access and right to enjoy competent patent jurisdiction should not be bound to financial power. And it should be easily accessible to users.

2.6. Regional Divisions

FICPI regrets that the attractiveness of establishing regional divisions for Member Countries with limited experience in patent litigation has disappeared with the present political environment concerning the UPC Agreement draft compared to previous proposals where such regional divisions were planned to be financed by the EU. FICPI has always advocated the preservation of established and successful court structures for the future EU patent litigation[39] and supported the establishment of competent regional divisions for Member Countries where such structures do not exist[40]. Such incentives should, if possible, be reintroduced in the UPC system.

2.7. Extent of competences of the Court

Questions of ownership are frequently involved in patent litigation. For example, an alleged infringer may argue that he is the (real) owner of the patent and the (current) patent proprietor has abusively derived the invention from the alleged infringer (or from the provider or recipient of the goods infringing the patent). There are no stipulations foreseen in the present UPC Agreement draft as to how questions of ownership are addressed by the UPC. It is not clear whether the “related defence” according to Art. 15 of the UPC Agreement draft covers such issues or not.

FICPI believes that appropriate clarification of the competence of the UPC to hear questions of ownership of inventions or patents is required in the present draft.

Similarly there is no sufficient provision or explanation of a (possible) role of the UPC in seizures such as descriptive seizures under the IP-Enforcement Directive.

In addition, there is no sufficient definition of the (possible) role of the UPC in declaratory judgements for non-infringement and possible counterclaims for infringement in such cases. For instance, would the case be transferred from a national Court to the UC once such counterclaim is filed?

2.8. Connection to the EPC

In the Statement of Position by the Advocates General (presented on 2nd July 2010), the role of the administrative proceedings under the EPC, “in particular appeals against the EPO filed by companies making unsuccessful applications for the granting of patents, as well as appeals filed by third parties unsuccessfully opposing the granting of a patent” was criticised[41]. It was concluded that – without establishment of appropriate measures[42] – such a system of administrative proceedings “does not satisfy the requirement of effective judicial control over the granting of patents or the desire for a correct and uniform application of Union law”.

FICPI therefore urges the drafting authorities of the UPC Agreement to overcome the deficiencies of this system with respect to the issue of administrative proceedings as requested by the Advocates General.

2.9. Referrals to the CJEU

Certain stakeholders have objected to the involvement of the CJEU in patent matters[43]. It is feared that the CJEU would become overloaded with referrals (resulting in delays) and that the rulings of the CJEU (as currently non-specialized court) would be unclear[44]. FICPI shares those fears to a certain extent and remembers that many decisions by the CJEU in IP matters, also in patent matters[45], are controversially discussed. However, FICPI also points to the fact that in the legal system of the EU, there is no supranational authority other than the CJEU that could ensure pan-EU harmonisation (by way of referrals under Art. 267 TFEU) in contentious legal matters. The EU system comprising the CJEU at its top – even after almost 60 years of activity – is, of course, still not an optimal system, however, it had to be introduced and still works as a compromise of EU Member States for giving up national sovereignty for the sake of EU harmonisation. From an institutional perspective, there does not seem to exist any other authority which could enable pan-EU patent jurisdiction within the legal framework of the EU. The UPC Agreement creates a system within this legal framework that can offer practical advantages. Nevertheless, it cannot act outside this established legal framework. If therefore a pan-EU harmonisation of patent jurisdiction is wished, any practical solution thereto would have to involve the CJEU by way of referrals under Art. 267 TFEU. If the necessary Regulations and Agreements are drafted with the intention of keeping away as many potential questions form the CJEU as possible, the quality of these Regulations and Agreements will suffer (because it is difficult enough to provide the optimal legal framework without such additional “strategic” drafting hurdle).

FICPI therefore thinks that instead of trying to manipulate the wording of the relevant Regulations and Agreements which could have negative effect on the system as a whole, it should be aimed to make the CJEU a competent final authority also in patent matters and IP matters in general and to provide the CJEU with the means to achieve such goal.

In this regard, FICPI has suggested in the past that the CJEU should include chambers specialised in intellectual property law[46] (of course other specialisations could be beneficial for other highly specialised legal fields). FICPI still regards this as the most effective approach for trying to keep as many potential referrals as possible away from the CJEU (an intention which, according to FICPI’s understanding of the legal framework of the EU, cannot be successful in the end).

2.10. Opting-out

In Europe, small-scale and local patent litigation cases are common, typically between SMEs competing on a smaller market than the whole EU.

Unless the UPC affords to such users a system which is as cost-effective and user-friendly as existing local courts, the possibility for such users to continue relying on the existing courts for dealing with their patent disputes should be reflected upon.

2.11. Representation by Qualified Patent Attorneys

FICPI welcomes the stipulations concerning the rights of representation of parties in the UPC Agreement. In many Member States, qualified patent attorneys (including many FICPI members) are already “lawyers” according to Art. 28(1) UPC Agreement draft (such as attorneys at law), because they can represent clients before national courts, e.g. specialised IP courts[47]. It is, however, also beneficial for the system that European Patent Attorneys having appropriate qualifications can represent parties before the UPC[48]. Legal[49] and economic[50] studies have also strongly supported such representation by qualified patent attorneys.

The UPC Agreement will create a new legal system with new Rules of Procedure that will be a compromise between various traditions of EU Member States. This is expected to be similar to the proceedings at the EPO, which do include dispute-type inter partes proceedings, such as opposition proceedings and related appeals. Practice shows that less than 1% of clients in opposition/appeal proceedings at the EPO are represented by attorneys at law and that European patent attorneys have been well trained and suited to these special rules of proceedings and the complex legal and technical requirements for representation, including language skills.

FICPI therefore shares the opinion of the EU Parliament[51] that it “is of utmost importance that parties are represented by lawyers with the necessary experience in both patent and procedural law.” Absent contrary indications, the EU Parliament appears to continue supporting the right of representation of European Patent Attorneys with appropriate qualifications and sharing the view of most of the stakeholders, including FICPI, that the current stipulations for representation are highly beneficial for the functioning of this system, provided that the “appropriate qualifications” are defined in a practical and reasonable manner, taking into account the national qualification regimes already in place.

December 3, 2011

 /


[1] “Conclusions on an enhanced patent system in Europe” at the 2982nd Competitiveness (Internal market, Industry and Research) Council meeting in Brussels on 4 Dec. 2009

[2] FICPI–response of 30 March 2006 (EXCO/FR06/CET1403); http://circa.europa.eu/Public/irc/markt/markt_consultations/library?l=/industrial_property/patents/consultation_future/f_contributions&vm=detailed&sb=Title

[3] Open Hearing in Brussels on 12 July 2006 http://ec.europa.eu/internal_market/indprop/patent/hearing_speeches_en.htm

[4] Directive 2004/48/EC; also with proper adjustments for preventing “torpedos” and the like

[5] Council Regulation No. 44/2001

[6] Draft Agreement on a Unified Patent Court and draft Statute (document st16741/11 of the EU Presidency of 11 November 2011)

[7] Proposal for a Regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent (and proposal for a Regulation thereto with regard to the applicable translation arrangements (document st16016/11 of the General Secretariat of 26 October 2011)

[8] See FICPI Resolution 006 (“Voluntary Translations”) passed at its Executive Committee held in Rome, Italy from 6 to 9 November, 2011

[9] See FICPI Resolution 007 (“Technically Qualified Judge”) passed at its Executive Committee held in Rome, Italy from 6 to 9 November, 2011

[10] Art. 52-57 and 138 EPC

[11] Art. 69 EPC including the Protocol on the Interpretation of Art. 69 EPC

[12] CJEU C-4/03 of 13 July 2006 (Gesellschaft für Antriebstechnik mbH & Co. KG v. Lamellen und Kupplungsbau Beteiligungs KG)

[13] Including the fact that the „European Patent with unitary effect“ cannot be termed „EU Patent“

[14] Art. 118 TFEU

[15] Any member state of the EPC either accepts all of the EPC or will no longer be a member state. This is different from for example the Paris Convention and the PCT, in which member states can be party under different versions.

[16] “Any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States.” (emphasis added)

[17] Which was intended to be the basis for the Community Patent under the Community Patent Convention and currently serves as a basis for the unitary effect in Switzerland and Liechtenstein

[18] Art. 6 to 9 of the UPR draft

[19] Art. 8c of the UPR

[20] Art. 14i UPC Agreement draft

[21] Although Art. 5 of previous versions of the UPR draft contained a stipulations concerning prior European rights

[22] Under Art. 14c (1)(c) UPC Agreement draft

[23] As suggested in previous versions of this Article at least for limitations

[24] „In the case of a dispute relating to a European patent with unitary effect, the patent proprietor shall provide at the request and the choice of an alleged infringer, a full translation of the patent into an official language of the participating Member State in which either the alleged infringement took place or in which the alleged infringer is domiciled.

[25] Art. 4(2) UPTR draft

[26] „in particular if the alleged infringer is a small or medium-sized enterprise“

[27] See FICPI Resolution 006 (“Voluntary Translations”) passed at its Executive Committee held in Rome, Italy from 6 to 9 November, 2011

[28] COM(2003)828 final of 23 Dec. 2003

[29] http://documents.epo.org/projects/babylon/eponet.nsf/0/B3884BE403F0CD8FC125723D004ADD0A/$File/agreement_draft_en.pdf

[30] Article 15 (Competence of the Court): “(1) The Court shall have exclusive competence in respect of: (a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences; [...]” (emphasis added)

[31] Article 28 (Representation): “(1) Parties shall be represented by lawyers authorized to practise before a court of a Contracting Member State. (2) Parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC and who have appropriate qualifications such as a European Union Patent Litigation Certificate. (2a) Representatives of the parties may be assisted by patent attorneys who shall be allowed to speak at hearings of the Court in accordance with the Rules or Procedure. [(3) .. (5)]” (emphasis added)

[32] In Article 6 of st16023/11 of 26 October 2011

[33] of course, it is clear that also the technically qualified judge has a legal qualification or practice and that all judges are “legally qualified” so that the term “legally qualified judge” in the UPC Agreement draft might be misleading

[34] See FICPI Resolution 007 (“Technically Qualified Judge”) passed at its Executive Committee held in Rome, Italy from 6 to 9 November, 2011

[35] which has been rejected by the CJEU in Opinion 1/09

[36] Paragraphs 121 and 122 of the Statement of Position by the Advocates General (presented on 2nd July 2010)

[37] Paragraph 121 of the Statement of Position by the Advocates General (presented on 2nd July 2010)

[38] Paragraph 116 of the Statement of Position by the Advocates General (presented on 2nd July 2010)

[39] FICPI–response of 30 March 2006 (EXCO/FR06/CET1403); http://circa.europa.eu/Public/irc/markt/markt_consultations/library?l=/industrial_property/patents/consultation_future/f_contributions&vm=detailed&sb=Title; Open Hearing in Brussels on 12 July 2006 http://ec.europa.eu/internal_market/indprop/patent/hearing_speeches_en.htm

[40] With the help of such established structures and under supervision by high quality criteria (e.g. established by way of a EU Directive defining such minimum quality criteria for such regional (and local) divisions)

[41] Paragraphs 68 to 76 of the Statement of Position by the Advocates General (presented on 2nd July 2010)

[42] E.g. (as suggested by the Advocates General): “administrative proceedings against decisions of the EPO”; “creation of an administrative patent court which should be authorized, unequivocally, to refer to the European Court of Justice for a ruling on a preliminary question” (Paragraph 73 of the Statement of Position by the Advocates General (presented on 2nd July 2010))

[43] Two representative examples: The Rt. Hon. Prof. Sir Robin Jacob and Prof. Dr. Rudolf Kraßer

[44] Two representative examples: The Rt. Hon. Prof. Sir Robin Jacob and Prof. Dr. Rudolf Kraßer

[45] C-267/95 and C-268/95 (Merck ./. Primecrown; Beecham ./. Europharm (Exhaustion)), Biotech-Directive: C-428/08 (Monsanto Technology LLC ./. Cefetra BV) and C-34/10 (Oliver Brüstle ./. Greenpeace e.V.); SPC-Regulation: as a representative, recent example: C-322/10 (Medeva BV ./. Comptroller General of Patents, Designs and Trade Marks)

[46] In view of the Community design and trade mark matters as well as in view of the current and future patent matters, there seems to be enough cases for this purpose

[47] At least in AT, CY, CZ, DE, EE, GB, HU, LI, LV, NL, PL, RO, (SE) (epi information 3/2009, pages 87 ff.).

[48] In fact, many Member States already have established appropriate qualification regimes for patent attorneys wherein litigation skills are certified. In most of such systems, appropriate disciplinary measures are also foreseen (see e.g. “The Patent Profession in the EPC Contracting States” (epi information 3/2009, pages 78 ff. and 87 ff.).

[49] Christopher Morcom, Q.C., in E.I.P.R. [2009] No. 5, page 223

[50] “Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System” by Prof. Dietmar Harhoff, Ph.D. (26 February 2009)

[51] “Draft Report on jurisdictional system for patent disputes” (2011/2176(INI)) Committee on Legal Affairs of the European Parliament