The slides for my presentation to the Merseyside meeting of the Chartered Institute of Patent Attorneys on 28 Jan 2016. This presentation discusses the Unified Patents Court, the unitary patent, the implementing legislation and the UPC Agreement.

1. Preparing for the UPC
Jane Lambert
Merseyside Meeting
28 Jan 2016

2. Why prepare for the UPC?
Likely to open for business towards the end of
2016 or the beginning of 2017
• Nine countries including France have already
ratified the UPC Agreement;
• The UK has passed primary legislation
enabling ratification;
• Germany likely to ratify the UPC Agreement by
Sept 2016.

3. Why is the UPC important?
• It will have exclusive jurisdiction to determine
claims for infringement and revocation of unitary
patents;
• It will share jurisdiction over existing European
patents (UK) with the Patents Court and IPEC
subject to any opt-outs during a transitional
period; and
• It will have exclusive jurisdiction over European
patents (UK) after the transitional period.

4. What is the UPC?
• A legal hybrid: neither a national court like the
Patents Court nor an EU court like the CJEU
but a court shared by the contracting member
states.
• Contracting member states are jointly and
severally responsible for ensuring compliance
with EU law and can be sued for any failure to
do so.

5. What is the UPC?
• A self contained court system comprising a
Court of First Instance, a Court of Appeal and
a Registry (art 6 (1));
• The Court of First Instance shall comprise a
central division and local and regional
divisions (art 7 (1)).
• The central division will be in Paris with
sections in London and Munich (art 7 (2)).

6. What is the UPC?
• The London section will handle cases on
human necessities, chemistry and metallurgy
(art 7 (2) and Annex II).
• Munich will handle mechanical engineering,
lighting, heating, weapons and blasting (ibid).
• Paris will handle performing operations,
transporting, textiles, paper, fixed
constructions, physics and electricity (ibid).

7. What is the UPC?
• Each contracting member state can ask for up
to 4 local divisions to be set up in its territory
(art 7 (3) and (4)).
• Groups of contracting states can set up a
regional division in accordance with art 7 (5).
• The UK is likely to have at least one local
division in London as well as the London
section of the central division.

8. What is the UPC?
• The Court of Appeal shall sit in Luxembourg
(art 9 (5)).
• It will hear appeals from final and interim
decisions of the Court of First Instance (art 73
(1)).
• The Registry will be in Luxembourg (art 10 (1))
but there will be sub-registries in all divisions
of the Court of First Instance (art 10 (2)).

9. Sources of Law
There are three basic sources:
• Regulation (EU) No 1257/2012 of the
European Parliament and of the Council of 17
December 2012 implementing enhanced
cooperation in the area of the creation of
unitary patent protection (OJ 31.12.2012 L
361/1)

10. Sources of Law
• Council Regulation (EU) No 1260/2012 of 17
December 2012 implementing enhanced
cooperation in the area of the creation of
unitary patent protection with regard to the
applicable translation arrangements (OJ
31.12.2012 L 361/89) and
• Agreement on a Unified Patent Court of 19
Feb 2013 (“the UPC Agreement”).

11. Sources of Law
Art 24 of the UPC Agreement requires the UPC to
base its decisions on:
• EU law including Regs. 1257/2012 and
1260/2012;
• UPC Agreement;
• European Patent Convention;
• Other international agreements binding all
contracting states such as Paris Convention; and
• National law.

12. The Monopoly
Art 25 of the UPC Agreement provides:
A patent shall confer on its proprietor the right to prevent any third
party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which
is the subject matter of the patent, or importing or storing the
product for those purposes;
(b) using a process which is the subject matter of the patent or,
where the third party knows, or should have known, that the use
of the process is prohibited without the consent of the patent
proprietor, offering the process for use within the territory of the
Contracting Member States in which that patent has effect;
(c) offering, placing on the market, using, or importing or storing for
those purposes a product obtained directly by a process which is
the subject matter of the patent.

13. The Monopoly
Art 26 (1) also provides:
“A patent shall confer on its proprietor the right to
prevent any third party not having the proprietor's
consent from supplying or offering to supply, within the
territory of the Contracting Member States in which that
patent has effect, any person other than a party entitled
to exploit the patented invention, with means, relating to
an essential element of that invention, for putting it into
effect therein, when the third party knows, or should
have known, that those means are suitable and intended
for putting that invention into effect. “

14. The Monopoly
Arts 26 (2) to 29 provide limits to the monopoly:
• Art 26 (2) provides that art 26 (1) shall not
apply when the means are staple commercial
products, except where the third party
induces the person supplied to perform any of
the acts prohibited by article 25.

15. The Monopoly
• Art 27 provides that the rights conferred by a
patent shall not extend to any of the
following:
– acts done privately and for non-commercial
purposes;
– acts done for experimental purposes relating to
the subject matter of the patented invention;
– the use of biological material for the purpose of
breeding, or discovering and developing other
plant varieties;

16. The Monopoly
– the acts allowed pursuant to Article 13(6) of
Directive 2001/82/EC or Article 10(6) of Directive
2001/83/EC in respect of any patent covering the
product within the meaning of either of those
Directives;
– the extemporaneous preparation by a pharmacy,
for individual cases, of a medicine in accordance
with a medical prescription or acts concerning the
medicine so prepared;

17. The Monopoly
– the use of the patented invention on board vessels of
countries of the International Union for the Protection
of Industrial Property (Paris Union) or members of the
World Trade Organisation, other than those
Contracting Member States in which that patent has
effect, in the body of such vessel, in the machinery,
tackle, gear and other accessories, when such vessels
temporarily or accidentally enter the waters of a
Contracting Member State in which that patent has
effect, provided that the invention is used there
exclusively for the needs of the vessel;

18. The Monopoly
– the use of the patented invention in the
construction or operation of aircraft or land
vehicles or other means of transport of countries
of the International Union for the Protection of
Industrial Property (Paris Union) or members of
the World Trade Organisation, other than those
Contracting Member States in which that patent
has effect, or of accessories to such aircraft or
land vehicles, when these temporarily or
accidentally enter the territory of a Contracting
Member State in which that patent has effect;

19. The Monopoly
– the acts specified in Article 27 of the Convention on
International Civil Aviation of 7 December 19441 ,
where these acts concern the aircraft of a country
party to that Convention other than a Contracting
Member State in which that patent has effect;
– the use by a farmer of the product of his harvest for
propagation or multiplication by him on his own
holding, provided that the plant propagating material
was sold or otherwise commercialised to the farmer
by or with the consent of the patent proprietor for
agricultural use. The extent and the conditions for this
use correspond to those under Article 14 of
Regulation (EC) No. 2100/942 ;

20. The Monopoly
– the use by a farmer of protected livestock for an
agricultural purpose, provided that the breeding
stock or other animal reproductive material were
sold or otherwise commercialised to the farmer by
or with the consent of the patent proprietor. Such
use includes making the animal or other animal
reproductive material available for the purposes
of pursuing the farmer's agricultural activity, but
not the sale thereof within the framework of, or
for the purpose of, a commercial reproductive
activity;

21. The Monopoly
– the acts and the use of the obtained information
as allowed under Articles 5 and 6 of Directive
2009/24/EC, in particular, by its provisions on
decompilation and interoperability; and
– the acts allowed pursuant to Article 10 of
Directive 98/44/EC

22. The Monopoly
• Art 28 provides for prior user:
“Any person, who, if a national patent had been
granted in respect of an invention, would have
had, in a Contracting Member State, a right
based on prior use of that invention or a right of
personal possession of that invention, shall
enjoy, in that Contracting Member State, the
same rights in respect of a patent for the same
invention.”

23. The Monopoly
• Art 29 for exhaustion of rights:
“The rights conferred by a European patent shall
not extend to acts concerning a product covered
by that patent after that product has been
placed on the market in the European Union by,
or with the consent of, the patent proprietor,
unless there are legitimate grounds for the
patent proprietor to oppose further
commercialisation of the product.”

24. The Judiciary
• Art 15 (1) provides:
“The Court shall comprise both legally qualified judges
and technically qualified judges. Judges shall ensure the
highest standards of competence and shall have proven
experience in the field of patent litigation.”
• Legally qualified judges shall possess the qualifications
required for appointment to judicial offices in a
Contracting Member State (art 15 (2))
• Technically qualified judges shall have a university
degree and proven expertise in a field of technology.
They shall also have proven knowledge of civil law and
procedure relevant in patent litigation. (art 15 (3)).

25. The Judiciary
• Judges are trained in accordance with a
judicial training framework at a training centre
in Budapest.
• Judges of the Court of First Instance will
normally sit in panels of 3 with a multinational
composition (art 8 (1)).
• Parties may agree to have their case heard by
a single legally qualified judge (art 8 (7)).

26. The Judiciary
• The Court of Appeal will normally sit in panels
of 5 consisting of 3 legally qualified judges
from different countries and 2 technically
qualified judges (art 19 (1)).
• Appeals in respect if administrative decision
of the EPO can be heard by panels of 3 legally
qualified judges (art 19 (2)).

27. Procedure
• Art 41 provides for Rules of Procedure to be
adopted after broad consultation with stake
holders and the Commission.
• Draft rules have been prepared by a
Preparatory Committee composed of
representatives of the Contracting States but
there has not yet been any public
consultation.

28. Procedure
• The UPC is bound by art 42 (1) to “deal with
litigation in ways which are proportionate to
the importance and complexity thereof.”
• It is also required by art 43 actively to
“manage the cases before it in accordance
with the Rules of Procedure without impairing
the freedom of the parties to determine the
subject-matter of, and the supporting
evidence for, their case.”

29. Representation
• Parties may be represented by lawyers
authorized to practise before the courts of a
contracting state under art 48 (1) or by
European patent attorneys entitled to act
before the EPO under art 48 (2).
• They may be assisted by other patent
attorneys who will have a limited right of
audience under art 48 (4).

30. Proceedings
• Art 52 (1) provides for a written, interim and
oral procedure.
• Broadly, the written procedure equates to the
exchange of pleadings, interim procedure to
case management and the oral procedure is
the parties’ opportunity to “explain properly
their arguments.”
• There appears to be no general duty of
disclosure.

31. Legal Aid
• Art 71 (1) enables a natural person who is
unable to meet the costs of the proceedings,
either wholly or in part, to apply for legal aid.
• The conditions for granting legal aid are to be
laid down in the Rules of Procedure.
• Rule 376 of the draft rules provides for legal
aid to cover court fees, advice and
representation and any costs awarded to non-
assisted parties.

32. Further Information
4-5 Gray’s Inn Square
London
WC1R 5AH
Tel 020 7404 5252
Jlambert@4-5.co.uk
http://nipclaw.blogspot.com