Today’s oral hearing provides an opportunity
for some 70 invited representatives of companies, organisations
and courts to comment on the latest version of the Rules of
Procedure. The hearing can also be viewed via the ERA webcast.
The injunction gap
we have previously
reported, the 17th version of the Draft was
broadly welcomed, in particular by those in the IT and telecoms
industries who had expressed concerns about the so-called
injunction gap – that is, the risk of injunctions
being granted before patent validity has been properly
A number of changes to the Rules addressed this concern by
limiting the scope for bifurcation: while it is still possible
for validity and infringement to be heard by different
divisions of the UPC, rules have been proposed to transfer or
stay cases in certain circumstances. However, the rules on
injunctions themselves were not significantly revised: in
particular, there is no eBay-style bar on injunctions
Many in the IT industry would still like to see such a bar,
and I expect some people will argue for that today. But on
balance they are happy with the compromises reached, and I
believe would broadly support the Rules as now drafted.
Other issues that
might be raised today include the language of proceedings, and
when that can be changed, and who can represent clients before
the Court. More generally, there are likely to be questions
about the balance between setting rigid rules and giving judges
discretion to make decisions based on the facts before
But today’s hearing and any debate that follows
represent the final straight in a long race to draft the rules,
in which the group of experts led by Kevin Mooney
(left) is widely thought to have done a good job. There
are likely to be only minor changes now before the Rules are
signed off by member states in the first half of next year.
Disappointment regarding fees
Unfortunately, other aspects of the new system appear to
have made far less progress. Work is underway on the court
infrastructure, including buildings, IT and staffing, and on
appointing the judges. The biggest disappointment so far has
been regarding the fees, and in particular the annuity fees
that will have to be paid for Unitary Patents.
As we have
noted before, the participating member states seem to be
struggling to reconcile the twin aims of making the fees
attractive while ensuring that national offices do not lose
out. It looks like we are not going to see any announcement
until at least the middle of next year, which is a pity given
that people are planning budgets now.
"I’m afraid that if the fees
are more than three or four countries, then the system will
hardly be used."
Even worse, however, there are increasing concerns among
practitioners I have spoken to that the costs will be higher
than anticipated, and crucially could be higher than the cost
of protection in a few key European markets, such as France,
Germany and the UK (and remember that key markets, including
Italy, Spain, Switzerland and Turkey, will not be covered by
As one in-house counsel in the biotech industry told me this
week: "I’m afraid that if the fees are more than
three or four countries, then the system will hardly be used."
Another in-house attorney, in the IT sector, had a similar
perspective: "We want to use the system and we will use it for
some of our patents. But how many we put in will completely
depend on the cost."
It is tempting to contrast the progress made on the Rules,
by a group of patent lawyers and judges essentially
volunteering their time, with the inertia on the costs
discussions, which are being held by representatives of member
state governments under the auspices of the EPO.
Those representatives met for the
10th time in Munich last month and reported that
work on the fees will continue. It’s worth
restating that the primary aim of the enormous task of
introducing a Unitary Patent and Unified Patent Court was to
cut costs for business. If that is not going to be achieved,
then all the rest of the work will be in vain.
Look out for a report on today’s hearing on