La Cour Unifiée des Brevets (UPC) - Enjeux et défis immédiats par Bruno Vandermeulen et Isabelle...
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Transcript of La Cour Unifiée des Brevets (UPC) - Enjeux et défis immédiats par Bruno Vandermeulen et Isabelle...
Vendredi 25 avril
La Cour Unifiée des Brevets (UPC) - Enjeux et défis immédiats
Bruno VANDERMEULEN et Isabelle DUPUIS, Bird & Bird
Avec le soutien de :
UPC strategic challenges
Liege Creative
25 April 2014
Page 2 © Bird & Bird LLP 2014
Table of contents
• The New UPC System • In the News • Strategic Issues • Transitional Regime
The New UPC System
A Refresher
Current Patent Litigation in Europe
European Patent Convention • 38 member states, 27 European Union member states • Central patent application procedure • Granted patents are subject to the laws of the countries of
registration, and so are claims for infringement • CJEU 13-7-2006, C-539/03, Roche vs Primus & Goldenberg
• Validity: exclusive jurisdiction of each country of registration • Article 24 section 4 Brussels I Regulation 2012
No unitary patent right 38 countries to litigate in 38 national laws apply to infringement and validity
Page 4 © Bird & Bird LLP 2014
In the future
3 main options for patents • "Traditional" EP, validated in countries of choice • National patents • EP with unitary effect, 25 EU member states: NEW IP RIGHT
+ option for traditional EP in remaining 13 countries
New litigation system • Unified Patent Court (UPC)
• Unitary patents • Traditional European patents (not opted out/opted in again)
• National courts • Traditional European patents (opted out): 7 years transitional period • National patents
Page 5 © Bird & Bird LLP 2014
The Unitary Patent Package - Instruments
Page 6 © Bird & Bird LLP 2014
• Regulation n° 1257/2012 : enhanced cooperation on Unitary Patent Protection (UP Regulation)
• Regulation n° 1260/2012: translation arrangements
EU Level
• Agreement n° 2013/C 175/01 on a Unified Patent Court (UPA) • Statute • Rules of Procedure (16th draft)
Intergouvernementallevel
+ impact on Brussels I (Recast) & national laws
The Unitary Patent Protection
Enhanced cooperation • 25 participating member states (PMS), excl. Croatia, Italy, Spain
Entry into force & application • UP Regulation • Entered into force on 31 December 2012 • Shall apply from the date of entry into force of the UPA • Exception: EP with unitary effect has unitary effect only in those PMS in
which the UPC has exclusive jurisdiction
Basis for EP with unitary effect • Granted European patent (EPO) • Patent with same set of claims in all PMS
Page 7 © Bird & Bird LLP 2014
The Unitary Patent Protection
Non mandatory • Unitary effect has to be registered in the register for unitary patent protection
at the EPO
• Deadline for filing the request: 1 month of the date of the publication of the mention of the grant of the EPO
• Date of effect is the date of publication by the EPO of the mention of the grant of the EP
Strategic considerations • Decision can not be undone
• No conversion possible
• No costs for designation
Page 8 © Bird & Bird LLP 2014
The Unified Patent Court
One single court for patent litigation in EU • Infringement, validity, damages • 25 countries
ü Poland still needs to decide, Spain/Italy will not join (for now)
Entry into force & application • UPA • Signed 19 February 2013 (Bulgaria 5 March) • Entry into force 4 months after ratification by Big Three + 10 other
countries • EU urged for start early 2014, now horizon is early 2015
Page 9 © Bird & Bird LLP 2014
Structure of the UPC
Page 10 © Bird & Bird LLP 2014
Court of First Instance
Central division
Paris (Electronics)
London (Life sciences)
Munich (Mechanical engineering)
Local divisions
max 4 per country
Regional divisions
Countries cooperating to form a division
Court of Appeal (Lux.)
Registry (Lux.)
Patent Mediation & Arbitration
Center
REVOCATION DECL. NON-INFR.
INFRINGEMENT PROV. MEASURES
Exclusive competence of the UPC
• Actions before the Unified Patent Court • Actual or threatened infringement, incl. counterclaims re. licences • Declaration of non-infringement • Provisional and protective measures and injunctions
• incl. saisie-description • Revocation and declaration of invalidity • Damages and compensation for use prior to grant • Use prior to grant and rights based on prior use
• Actions before national courts • Entitlement of Unitary Patents and traditional European patents • Licences • All other actions: declaration of non-essentiality?
Page 11 © Bird & Bird LLP 2014
Actions by the licencees – art. 47 UPA
Exclusive licensee • Can bring infringement action before the UPC under the same
circumstances as the patentee • Unless licence agreement provides otherwise • Prior notice must be given
Non-exclusive licensee • Only if agreement provides for it
• Patentee may join the action • Validity can only be contested if patentee participates • Solution in Rule 25: registry serves counterclaim for revocation on
patentee
Page 12 © Bird & Bird LLP 2014
Limited role of the CJEU
Problem: lack of knowledge of patent law and technology
Solution: limit the jurisdiction of the CJEU • Provisions on infringement moved from UP Regulation to UPA (art. 25 – 30) • Provisions on validity already in European Patent Convention
Remaining jurisdiction • Unitary Patent Regulation: uniform protection (art. 5)
• Exhaustion (art. 6), license declaration (art. 8) • What if diverging national laws need to be applied?
• Any EU-Regulation or Directive: SPC Regulations, Paediatric Extension Regulation, Biotech Directive, Brussels I Regulation, Enforcement Directive, Anti-Piracy Regulation, Bolar provision, Doha Regulation, Evidence Regulation, Service Regulation
• EU Treaty, competition law, Tech Transfer Regulation?
Page 13 © Bird & Bird LLP 2014
In the News
Perspectives
Newsfeed
29 January Release of Interpretative Note on consequences of art. 83
6 March Publication of the 16th Draft of the Rules of Procedure dd. 31 January 2014
13 March Opening training centre for judges in Budapest
14 March Belgium: draft Bill on ratification of the UPC approved by the Senate
30 March List of potential candidate judges announced for early July
23 April Belgium: draft Bill adopted by the Belgian House of Representatives
Eagerly awaited Details on the costs (consider impact on costs of EP)
Page 15 © Bird & Bird LLP 2014
Strategic issues
Broader opportunities
Questions to be considered
• What kind of patents will be available?
• What effect will these patents have?
• What is the applicable court system? Will all disputes need to be brought before the UPC?
• What are the costs for obtaining/ maintaining/ enforcing/ attacking a patent?
• What can already be done at this stage?
Page 17 © Bird & Bird LLP 2014
Strategical decisions depend on the factual background and individual needs of the client
What kind of patents will be available?
• National patent(s)
• UP
• EP (e.g. DE, CH, NL, IT, ES, …)
• UP plus EP (e.g. CH, NO, …)
• Combination of National patents plus EP/UP
• Parent UP/EP with a divisional of the same/different category ● Nothing in the agreement or the regulation requires that a divisional application has
to have the same “type” than the parent application ● Consequence: parent could be e.g. a EP with unitary effect (UPC compulsory) and
divisional could be a traditional EP (with possibility to opt out)
Page 19 © Bird & Bird LLP 2012
Portfolio management Translation costs • No cost for UP
Same type of patent for all inventions? • Easy and straight-forward strategy • Potentially most cost sensitive • Not necessarily the ideal IP right for a particular case, considering both available
countries and strength of the invention
Decision for a specific patent type on a case by case basis? • Optimal IP right for a particular case • Potentially relatively costly since detailed analysis required
Generally same type of patent but different type if appropriate? • Compromise between costs and optimal protection
Page 20 © Bird & Bird LLP 2012
What effect will these patents have?
Effect of the European patent with unitary effect • Uniform protection and equal effect in all participating member states (PMS)
• Enforcement in every PMS, revocation for all PMS
• Limitation, transfer, revocation or lapse only possible in respect to all PMS
• Grant of a license is possible in respect of the whole or part of the territory of the PMS
Effect of a traditional EP • Bundle of national patents
• Enforcement/ revocation with respect to all designated states if not opted out; if opted out enforcement/revocation on national level
• Limitation can be nationally (if existent) or before the EPO
• Grant of a license is possible in respect of the whole or part of the territory of the designated states
Page 21 © Bird & Bird LLP 2012
What effect will these patents have?
Effect of a National patent • Effect only in the respective country
• Limitation, transfer, revocation, lapse and grant of licence only with respect to this country
Page 22 © Bird & Bird LLP 2012
National courts
What is the applicable court system?
National Patents
EP with unitary effect
Traditional EP
Unified Patent Court
Unified Patent Court or national courts during transitional regime Art. 83 UPA
The Transitional Regime
Transitional regime
For traditional EP only • Not for EP with unitary effect
Art. 83 (1) • Choice of forum for actions for infringement and/or revocation • UPC or national courts
• At least 7 years after entry into force of UPC Agreement
• Extendable!
Page 25 © Bird & Bird LLP 2014
Transitional regime
Art. 83(3) “Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period (…) shall have the possibility to opt out from the exclusive competence of the Court (…). The opt-out shall take effect upon its entry into the register”
Art. 83(4)
“Unless an action has already been brought before a national court, proprietors of or applicants for European patents (…) who made use of the opt-out in accordance with paragraph (3) shall be entitled to withdraw their opt-out at any moment (…). The withdrawal of the opt-out shall take effect upon its entry into the register.”
Choice for already existing EP (applications)
Page 26 © Bird & Bird LLP 2014
Opt-out
• Derogation to the exclusive competence of the UPC • EP can not be challenged + cannot be asserted before the UPC
• Can only be made by patentee • For all claims, all proprietors • Sunrise period • TRAP: no longer possible when proceedings have started before the
UPC • Absolute effect: not limited to the duration of the UPC action • Beware of action by licensee + attack from third parties!
Page 27 © Bird & Bird LLP 2014
Opt-in
• Withdrawal of an opt-out
• TRAP: not possible if national procedure has started • Even is national procedure started by the patentee • Absolute effect
• Cannot be undone • No second opt-out after opt-in
• Nuance: divisionals
Page 28 © Bird & Bird LLP 2014
Summary on options for traditional EP
General rule • If no opting-out: UPC proceedings ("small unitary patent") • One decision on e.g. validity and infringement
• If opting-out: traditional national system
• First opting-out then opting-in is possible
Exceptions • Opting-out not possible if UPC proceedings started
• Opting-in (after opting out) not possible if national proceedings started
Adverse party
• Decision whether or not to attack patent before patentee opted-out?
Page 29 © Bird & Bird LLP 2014
Strategic issues
• Choice of court
• Why would you want to opt-out? For which patents?
• Why would you opt-in?
• Applicable law
• Costs for opt-out: not more than an administrative fee
Page 30 © Bird & Bird LLP 2014
Advice
• Make an informed and positive choice ü Avoid using art. 83 (1)
• Case-by-case basis analysis ü Avoid early opt-out for all patent portfolio
• Beware of the consequences of each choice ü Avoid traps
Again: what kind of patents will be available?
Summary on potential types of patents
• National patent(s)
• UP
• EP (e.g. DE, CH, NL, IT, ES, …)
• EP (e.g. DE, CH, NL, IT, ES, …) opted out
• UP plus EP (e.g. CH, NO, …)
• Combination of National patents plus UP/EP (opted in/opted out)
• Parent UP/EP (opted in/ opted out) with a divisional of the same/different category
• (not to mention utility models in some countries)
Page 32 © Bird & Bird LLP 2014
What can be already done?
• Strategic think thank : prepare and anticipate the decisions
• Conduct due diligences on patent and licences portfolio
• Anticipate, tailor and diversify future filing strategies • Consider drafting and filing divisionals
• Anticipate possible actions by infringer or as claimant : be in the driver seat!
• Review license agreements • Limit rights for licensees to bring action • Who has the right to opt-out? • Choice of law • Opportunity to also consider new TTBER!
Examples for strategical options – as patentee
European patent with unitary effect • Strong patent: no doubts on patentability
• Patent protection required in all of Europe • e.g. pharmaceutical compound
• Advantage • Injunction, including preliminary injunction possible for all of Europe; validity
confirmed for all of Europe
• Disadvantage • Some relevant countries are not covered, unless there are also EP designations or
contemporary a national patent or traditional divisional EP patent be filed
• Alternatively • If patentee has doubts on validity but does not wish to litigate the case in various
jurisdictions
Page 34 © Bird & Bird LLP 2014
Examples for strategical options – as patentee
Traditional European patent – opting-out • E.g. if patent is relevant for several jurisdictions, is of high economic value
but of uncertain validity and if patentee is willing to litigate in various jurisdictions
• Advantage • patent cannot be revoked for all of Europe in one decision
Page 35 © Bird & Bird LLP 2014
Examples for strategical options – as patentee
Combination of parent and divisional application, one being a traditional EP with opt-out, the other a UP or EP without opt-out • Double-shoot strategy, for very important products for which patent
protection in several countries is required and where the validity of the patent is unclear
National patents • If patent is needed only in some jurisdictions
• Example: patent relevant to a product which is developed for the entire European market and not differentiating between products for different countries
Page 36 © Bird & Bird LLP 2014
Examples for strategical options – as adverse party
Example 1: grant of a strong EP (no good invalidity arguments) –patent is not opted out • Unlikely that patentee would opt out, infringement proceedings before UPC
likely • Filing of a protective letter
Example 2: granted traditional EP (not-opted out) is considered to be invalid
• Starting revocation action with the UPC before patentee has opted out
Example 3: granted traditional EP (opted out) with uncertain validity • Starting revocation action with a national court as soon as possible to avoid
opting in
• Use of national courts with a less patentee-friendly history
Page 37 © Bird & Bird LLP 2014
Conclusion
Conclusion
Applicant/ Patentee has a lot more options for a filing/ enforcement strategy • Different IP rights • Different court systems • Combination of options • Full strategical evaluation requires information on costs
Adverse party has limited influence on the available options • Use of protective letters • Use of 3rd party observations • For weak EP (not-opted out) start UPC proceedings as soon as possible to avoid opting
out • For opted out EP with unclear validity start national proceedings as soon as possible to
avoid opting in
Page 39 © Bird & Bird LLP 2014
Bird & Bird is an international legal practice comprising Bird & Bird LLP and its affiliated and associated businesses.
Bird & Bird LLP is a limited liability partnership, registered in England and Wales with registered number OC340318 and is authorised and regulated by the Solicitors Regulation Authority. Its registered office and principal place of business is at 15 Fetter Lane, London EC4A 1JP. A list of members of Bird & Bird LLP and
of any non-members who are designated as partners, and of their respective professional qualifications, is open to inspection at that address.
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