UPC Update - HOFFMANN EITLE · The PPA (Protocol to the Agreement on a Unified Patent Court on...

1 Life Science IP Seminar 2017

Dr. Thorsten Bausch

UPC Update

European Patent Attorney, Patentanwalt | Partner

2 Life Science IP Seminar 2017

Entry into Force – Ratification Update

Future of UPC post Brexit

UPC Revocation vs. EPO Opposition

3

Ratification: Status Quo

Yellow: out - not an EU member state

Red: out - does not want to sign

or ratify

Orange: no current information

Dark green: expected to ratify soon

Light green: has ratified

UK: special (will exit EU, but most

probably stil l ratify UPCA before

Brexit...)

Life Science IP Seminar 2017

4

DIMMI QUANDO, SAG MIR WANN?

ENTRY INTO FORCE – WHEN?

2014 2015 2016 2017 2018 2019???


5

Three Instruments must be ratified

The UPCA

DE (and UK) still missing

The PPA (Protocol to the Agreement on a Unified Patent Court on

provisional application)

2 more member states still missing

AT, BG, MT and PT have ratified UPCA, but not yet consented to PPA

Supporters hope for GR, EE, LT or SI to ratify and consent soon

Target date of 29 May was missed

The Protocol on Privileges and Immunity

Not yet through UK Parliaments

RATIFICATION UPCA – MORE COMPLEX THAN YOU MIGHT THINK


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UK ratification process is ongoing, despite political will of

“take back control of our laws” and PM statement ”And we

are not leaving only to return to the jurisdiction of the

European court of justice.”

RATIFICATION UK


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RATIFICATION UK

The UK needs to sign the Protocol on Privileges and Immunities. [Done]

The signed Protocol will need to be laid before Parliament for 21 days

(Commenced on January 20; [Done])

A Statutory Instrument (SI) on Privileges and Immunities will need to be finalised

and laid before the Westminster and Scottish Parliaments (has happened in

Westminster, but not as yet in Holyrood)

The SI will be subject to an affirmative procedure which means that there will be

committee debates in both Houses of Westminster and also in the Holyrood

Parliament;

For the SI that passes through Westminster there will be both Commons and Lords

committees. The procedure will be broadly similar as for the SI related to the UPC

earlier in the year but will also include Privy Council approval;

Following approval of the SIs in the Westminster and Scottish parliaments, the rest

is formalities, the UPC Agreement will be ratified via an internal procedure between

the UKIPO and the Foreign Office.

Protocol on Privileges and Immunities


https://www.gov.uk/government/publications/eu-no12017-protocol-on-privileges-and-immunities-of-the-unified-patent-court

http://www.parliament.uk/site-information/glossary/affirmative-procedure/

8

So, where are we now in the UK?

UK has a new parliament and a new government

Brexit talks with EU have (finally!) started, but seem to be difficult

Uncertain whether general Brexit talk climate will impact UK and/or

DE ratification

Very unlikely that ratification process will be completed before the

summer break

Unclear whether a sufficient number of further states will consent

to PPA before summer break

Entry in force will not be before 1Q 2018!

ENTRY INTO FORCE


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Where are we now in Germany?

DE ratification successfully passed parliament, but deposit of

instrument of ratification is delayed/stayed for two reasons

IT system not yet ready – new CMS version about to be published in 1-2

weeks

German Federal Constitutional Court has asked the President to wait with

signing the ratification law until it has decided on a new constitutional complaint

(2 BvR 739/17)

UPC Preparatory Committee has meanwhile given up on its

previously estimated launch date of 1 December 2017.

As of now, no new date has been officially announced

RATIFICATION DE


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Assuming that

The UK deposits its instruments of ratification after the summer

break of Parliament

PPA is consented by at least 13 states

The IT is ready to go

Germany deposits its instruments of ratification after the UK but

still before the election in September

The UPC might start operation on 1 March 2018

Two sunrise periods might begin on 1 December 2017

For declaring an opt out before the UPC

For filing a request for unitary effect at the EPO

And 13 months later (1 April 2019) the UK will leave the EU…

LAUNCH OF EP-UE AND UPC – MOST OPTIMISTIC SCENARIO

Then


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A few things can still go wrong…

The new UK government may reconsider its position on the UPCA

and request that the UK’s future in the UPCA be clarified prior to

ratification

Germany and the other UPC member states may switch to plan B

w/o the UK

The German Federal Constitutional Court may require that a Court

be established that is competent to overturn final EPO decisions

and that the EPC in its present form violates Germany’s Basic Law

due to insufficient separation of powers

LAUNCH OF EP-UE AND UPC – PESSIMISTIC SCENARIO


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LAUNCH OF EP-UE AND UPC – PESSIMISTIC SCENARIO


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Question #1: What happens after Brexit?

PART II – AFTER LAUNCH...

Only this lady might know…

UK will ratify “without compromising our

position in the Brexit negotiations”

At a minimum, if the UK wants to stay

in, a new international agreement will

have to be concluded

UK will have to acknowledge

supremacy of EU law and CJEU for

purposes of patent disputes

UK should ensure that GB part of EP-

UE will be converted to EP(GB) patent

EU (and CJEU?) will have to agree that

a non-EU state may (from now on)

participate in the UPCA, contrary to the

prevailing understanding of C1/09


14

General Politics

EUROPE AT ITS BEST

UK government wants to “take back control of our

laws” and ”And we are not leaving only to return

to the jurisdiction of the European court of

justice.” (Guardian)

Merkel tells Britain no 'cherry-picking' in Brexit

talks (Reuters)

Chancellor Angela Merkel told Britain on Tuesday it

will not be able to cherry-pick the parts of the

European Union it wants, such as the single

market, without accepting principles like free

movement when it negotiates its exit from the bloc.


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BREXIT IN ONE PICTURE


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But when it comes to patents…

EUROPE AT ITS BEST

UK government considers UPCA as an “international agreement”,

rather than something related to the EU, and does not think that

CJEU and UPC jurisdiction on patent matters stands in the way of

the UK’s “control of our laws”

Rest of Europe seems to have no problem with UK cherry-picking

part of the EU law, i.e. patent law.


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EPO Opposition vs. UPC Revocation

When to use which proceeding?

PART III


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Basic Similarities

Post-grant Opportunity to attack a European Patent

and have it revoked

Contentious Proceedings

o Between Opponent(s)/Plaintiff(s) on one side and the Patentee/Defendant on the other side

o Opponent/Plaintiff has substantial procedural rights just like the patentee

o Neutral deciding body: EPO OD/TBA or UPC

o Technical expertise on the bench

The result is a decision about the validity and shape of

the patent:

o Revocation of the patent

o Limitation of the patent / Maintenance in Amended Form

o Dismissal of the attack / Maintenance in Full


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Lack of Patentability – Lack of Novelty

• Art. 54(2)

• Art. 54(3)

– Lack of Inventive Step

– Lack of Industrial

Applicability

– Violation of Morality

Insufficient disclosure

Added Matter

Grounds of Attack: Art. 100 EPC, Art. 138 EPC, Art. 139(2) EPC, Art. 65 UPCA

Lack of Patentability – Lack of Novelty

• Art. 54(2)

• Art. 54(3)

• Earlier unpublished national

applications

– Lack of Inventive Step

– Lack of Industrial Applicability

– Violation of Morality

Insufficient disclosure

Added Matter

Extension of scope after grant

Lack of Entitlement


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When to use EPO Opposition Proceedings?


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When to use EPO Opposition Proceedings

If you are still within the 9 month opposition period

If your budget is limited

If you can afford waiting for a decision

If the patent has been opted out

If you are interested in invalidating the patent in non UPC

countries (e.g. ES, PL...)

If the patent mainly suffers from added matter problems or

even an inescapable trap problem

If your prior art clearly anticipates the patented invention

If you want to use a straw man


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When to use UPC Revocation Action?


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When to use UPC Revocation Action

If you have missed the opposition period

If your (initial) budget is sufficient

If you have a good case and may hope for success and

remuneration of your costs

If you need a quick decision

If the patent is invalid for extension of scope of protection after

grant, lack of entitlement or lack of novelty over earlier filed but

unpublished national application

If the patent does not only suffer from added matter problems

If cannot clearly show obviousness using the EPO‘s problem -

solution-approach, but have other good obviousness arguments

(e.g. bonus effect falling into skilled person’s leap when doing

the obvious).


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When to use both?


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When to use both?


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When to use both?

If you MUST win

If costs play no big role

If you have found new and pertinent prior art that you can

no longer introduce into the pending proceedings

If you want to apply pressure on the patentee and force

him to come up with his arguments and claim amendments

as soon as possible

To recover part of your costs if you have already almost

won EPO opposition proceedings (?)


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Recital 1 of AC Decision on scale of recoverable cost ceilings


Article 69 of the Agreement qualifies the general rule that the unsuccessful party shall

bear the successful party’s costs by a number of principles, which serve as important

safeguards when the Court makes its decision on costs, by allowing for exceptions from

the general rule or limiting its application. (...)

Firstly, only reasonable and proportionate legal costs and other expenses incurred by

the successful party may be recovered from the unsuccessful party.

Moreover, equity may also serve as a self-standing ground for rendering the general

rule inapplicable.

Furthermore, (...) in exceptional circumstances the Court may order the parties to bear

their own costs, or apply a different apportionment of cost, based on equity.

Unnecessary costs caused to the Court or the other party shall be borne by the party

incurring them, which means that even the successful party has to reimburse costs

caused that are deemed unnecessary by the Court. Only the recoverable costs

established in compliance with these principles is measured against the ceilings (...).

There is a large margin of appreciation for the Court when applying the safeguarding

principles before making a cost decision.

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When to use both?

Filing UPC Revocation Action shortly before a

(presumably) positive final decision in EPO opposition

proceedings just to recover costs may be not such a good

idea…

Be reasonable rather than greedy, and you will be on the

safe side!


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A Final Thought for the Proprietor…

Do you want to leave your adversary the

choice where to attack your patent

centrally?

If your adversary has missed the 9 month

period, do you want to allow him a 2nd

chance for central attack?

If no, consider opting out!

Opting-out is reversible, so if you want to

enforce your patent before the UPC later,

you can still do it.


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Thank you for your attention


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Thank you for your attention!

Dr. Thorsten Bausch [email protected]

European Patent Attorney, Patentanwalt | Partner


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