hokey-cokey: opt-in, opt-out ...
Show me the money: One of the top concerns
for patent owners concerns the likely costs of the system, in
particular the annual renewal fees for Unitary Patents. Eskil
Waage of the EPO said there is "no breaking news" from the
committee discussing the fees, but that there might be some
developments in December this year or January 2015.
Judging the judges: Another key area of
uncertainty concerns the identity of the UPC judges. Pierre
Véron of Véron & Associés reported
that following an initial review the appointments panel had
identified 170 eligible legal judges, plus a further 184 who
would be eligible with training. In addition 341 eligible
technical judges have been contacted.
Hasta la vista, baby? The opinion of the
Court of Justice in Spain’s challenge to the
legality of the proposed system is due in October, which
suggests that the Court’s ruling will be published
by early 2015. While no one likes to predict how the CJEU will
rule, the consensus in Munich was that the Court will reject
Spain’s challenge. Judge Matthias Zigann of the
Regional Court of Munich predicted that not only would the
Court dismiss the action, but that Spain would eventually join
the new system.
Who will be using the new system? Luke
McDonagh of Cardiff University presented some findings from a
report he compiled for the UK IPO, including that the
Unitary Patent is likely to be popular with applicants from
Japan and the United States. He also noted that, paradoxically,
some applicants want to opt their crown jewel patents into the
system, while others are likely to dip their toes in with their
less valuable patents.
looming for Spain?
What’s coming next? Look out
for the next (17th) draft of the UPC Rules of
Procedure, which the Preparatory
Committee is expected to publish within the next couple of
months. This may (or may not) address
concerns raised by tech companies, for example regarding
The B word: Will courts bifurcate? No one
knows, but the likelihood is that they will in some cases,
though probably not as frequently as some fear. If they do,
then there are big concerns about injunctions being granted
while validity is still being challenged. One way to avoid that
of course is to ensure that validity is decided as quickly as
possible (which does not happen in Germany at the moment).
Good news for lawyers: There are still
plenty of legal questions that may only be resolved once the
first cases are before the courts. These include: Which law
applies if a patent is opted out of the system? (The
Preparatory Committee says national law, but there is scope for
debate.) How will courts approach evidence gathering before
trial? (National systems diverge quite widely at the moment.)
And what role will national law play in determining damages and
injunctions? (Christian Osterrieth of ROKH IP predicted that
national laws will be important.)
but these topics are still hot
Bad news for barristers? Tim Powell of
Powell Gilbert noted that scope for cross-examination by
counsel will be limited in the UPC, with the judge taking the
lead role in questioning witnesses. Is this bad news for
barristers or (as Tom
Mitcheson QC suggested on twitter) will they be best placed
to provide the necessary focus and expertise?
Defendants beware: The consensus among
speakers was that the proposed system is likely to be better
for plaintiffs than defendants (as one panellist said, the
plaintiff sits in the driver’s seat), though of
course much depends on how it works in practice. That begs the
question: as a defendant, would you prefer the existing
national (eg, German) system, or the proposed UPC?
Image problem: at the Paris forum,
Véron said that the preparatory committee had considered
a three-cog logo as an emblem for the new system. But this was
rejected when someone pointed out that it meant nothing could
questions; not so many answers
Calling Ljubljana and Lisbon: No one seems
to know much about what is happening with the planned Mediation
and Arbitration Centres. Will these even be used? If people
don’t like the court, other options might include
oppositions and third-party observations at the EPO, explained
Simon Roberts of BT. More radically, companies might consider
using other IP rights, such as designs and utility models.
Read the full programme, speaker details and delegate list
at our European
Patent Reform Forum page.
Find out about our European
Patent Reform Forum USA taking place in Silicon Valley and
New York in December.
During the event in Munich, Managing IP conducted some video
interviews with speakers and attendees. Look out for these on
the website soon.
Were you at either or both events? Add your comments and key
takeaways using the Comment button below.