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European Patent Reform Forum 2014: the highlights

Managing IP hosted two forums on the Unitary Patent and UPC this week, in Paris and Munich. Here are some of the key takeaways

Penny Gilbert
The UPC 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.

Spanish challenge
Is defeat 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 injunctions.

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.)

Munich hot topics
Summer's over, 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 move.

Munich panel
Plenty of 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.

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