The Unified Patent Court (UPC) is coming ever closer following important decisions taken by the Administrative Committee. The UPC should now open for business in Spring 2023, at the end of a 3 to 4-month ‘sunrise period’ that is currently expected to start in December 2022 and during which opt-outs can start to be filed.
At a meeting Friday 8 July, the Administrative Committee confirmed the local/regional divisions of the Court of First Instance, considered a list of recommended candidates for appointment as judges, and adopted the final version of the UPC’s Rules of Procedure and table of fees. The Rules will come into force on 1 September 2022.
The amendments to the Rules include new provisions on opt-outs, confidentiality clubs, video conferencing, access to the register, and other changes. In this blog post, we discuss the most important changes.
Opt-out on behalf of all of the states for which a European Patent is granted (Rule 5)
Whether or not to opt-out of their European patents (EPs) from the jurisdiction of the UPC, is probably one of the most pressing questions patentees have with respect to the UPC. For those who decide to opt-out, the new Rule 5 has an important change.
The current version of Rule 5 requires an application to opt-out to be made in respect of “all of the Contracting Member States” for which an EP/application is granted/designated. This, and the equivalent rule for withdrawing opt-outs, will be amended to refer to “all of the states”. The existing wording is said to be “inconsistent with the indivisibility of the application to opt-out” and “implies that the UPC solely has jurisdiction over [UPC states], which is not the case”. The new wording also avoids a ‘moving target’ of proprietors, as and when additional states ratify the UPC Agreement.
The change means more due diligence to ensure that not only proprietors of all the ‘UPC designations’, but also those of designations for other EU states (e.g. Spain, Poland, Croatia) and even non-EU EPC states (e.g. UK, Switzerland, Turkey), opt-out. It may also require dealing with designations outside of a patentee’s main ‘European’ commercial market that may have been assigned to third parties.
Given an opt-out may not be effective if it fails to meet the requirements, it will be important to get this right.
Unauthorized opt-outs (Rule 5A)
The UPC will not conduct identity checks on the proprietors listed in applications to opt-out or withdraw an opt-out, and the process will not be restricted to registered proprietors. There has therefore been concern that there could be illegitimate opt-outs – or, particularly, illegitimate withdrawals of an opt-out to expose a patent to attack in the UPC. New Rule 5A is intended to address this.
If there has been an unauthorized opt-out/withdrawal, the proprietor may apply to remove it, giving reasons. The Registrar will decide on the application “as soon as practicable”. If it is accepted, the unauthorized opt-out/withdrawal will be deleted. There is also a mechanism to seek a review of the decision. However, if an opt-out/withdrawal was genuinely unauthorized (rather than, say, the proprietor’s administrative error), it seems likely that a short explanation from the true proprietor will convince the Registrar.
Confidentiality clubs (Rule 262A)
Patent litigation often requires the disclosure of commercially sensitive material or trade secrets, such as details of an allegedly infringing process or financial information needed to calculate damages. New Rule 262A (Protection of Confidential Information) allows a party to request that such information in its pleadings, or the collection and use of evidence, be restricted or prohibited, or that access to information is restricted to specified individuals – i.e. so-called ‘confidentiality clubs’. The applicant must explain why it considers restrictions justified, and the court – having taken comments from the other party – will, in particular, consider whether the applicant’s reasons “significantly outweigh” the other side’s interest in full access.
The notes indicate that such restrictions will be reserved for exceptional cases. Nor will the UPC countenance ‘external eyes only’ arrangements. Under Rule 262A.6 at least one natural person nominated by each party, as well as their representative, must have access.
Access to the Register (Rule 262)
New Rule 262 creates a threshold for accessing documents on the Register and seems to address concerns that existed with respect to compliance with the GDPR.
The previous Rule 262.1 provided that pleadings, evidence and orders, and decisions of the court were to be publicly available unless a party had requested confidentiality. Under the new version, pleadings and evidence will now only be made available “upon reasoned request”, following the (where applicable) deletion of personal data. A decision will be taken by the judge-rapporteur after consulting the parties. This is similar to the approach of the German courts and the CJEU. The parties may still, separately, request that information in the documents is kept confidential, under what is now Rule 262.2.
A proposal at the Administrative Committee’s February meeting that would have required a reasoned request to obtain even the court’s orders and decisions – with a suggestion that only “a collection of important UPC decisions” would be published – has been rejected. Instead, orders and decisions will be published automatically, after the redaction of any personal or confidential information.
Practitioners will be pleased to be able to search all decisions, rather than just those deemed important by the court. However, many will still want to be able to see the evidence and pleadings underlying the decisions, as for example, they can at the EPO. While the redaction of personal and confidential information is clearly sensible, requiring a reasoned request to obtain evidence and pleadings does not seem strictly necessary. Those favoring openness will hope the new requirement is a low bar and permits access not only for professional, academic, and media interests but also to the general public. There may also be circumstances where third parties are interested in a case without wanting the parties to know (for example, if they are concerned about being sued for infringement or attacking a patent) and will want to be able to gain access without disclosing their identity.
The procedure for a party to request that information is kept confidential has also been amended. Given that pleadings and evidence will not now be public by default, parties will no longer have to request confidentiality upfront. Instead, after a request for public access, there will be a 14-day period to request confidentiality before anything is released.
Videoconferencing (Rules 112, 104)
One major change in litigation practice during the covid pandemic has been the increased use of remote hearings. While there have been technical challenges, videoconferencing seems here to stay. It is likely to be particularly useful for short or urgent hearings, or where parties have difficulty traveling. As the UPC will be a paperless court, with written submissions made electronically, it seems well suited to remote hearings. Amendments to Rule 112 (Conduct of the oral hearing) and Rule 104 (Aim of the interim conference) make provision for their wider use.
New Rule 112.3 allows the court to permit a party or representative to attend a hearing – or the court to hear a party or witness – by videoconference. It also permits the oral hearing to be heard entirely by videoconference either if all the parties agree or if “the Court considers it appropriate to do so in exceptional circumstances”. As examples of such “exceptional circumstances”, the accompanying notes suggest travel restrictions and disproportionality (with the example of a long journey for simple and short oral proceedings).
Rule 112.3 also states that, in all cases, the oral hearing is to be transmitted (in picture and sound) to the courtroom. The notes explain this to ensure that “the principle of publicity” is respected. In other words, members of the public can watch from the courtroom, even if the whole hearing is heard remotely. This requirement does not expressly refer to separate witness hearings, but Rule 115 states that both the oral hearing and separate witness hearings are to be open to the public, so it must be understood as extending to both.
Rule 104(h) supplements new Rule 112.3. It has been amended to permit the judge-rapporteur at the interim conference to order, after consultation with the presiding judge and the parties, the oral hearing or any separate witness hearing to be held wholly or partly by videoconference.
The UPC’s rules for seeking cooperation from other courts in taking evidence have been updated and consolidated. Rule 173 now covers seeking judicial cooperation not only with EU member states (adding a reference to recast Regulation (EU) 2020/1783 on taking evidence), but also with third countries. For those, the UPC will follow the Hague Evidence Convention, other international agreements, or – where no such convention applies – national law. Rule 202, which dealt with letters rogatory to non-EU courts, has thus been deleted.
The provisions for seeking a saisie have also been tidied up, making it clear in Rule 194.1 that the court may decide to hear the defendant to an ex parte application. This was implicit in Rule 194.5, which requires the court to warn the applicant of its intention and give it the option to withdraw its application instead, but any ambiguity is resolved. The procedure in Rule 194.4 for extremely urgent applications – where the standing judge may make an immediate decision – has been aligned with the equivalent for provisional measures (Rule 209.3).
The rules already provide that appeals against procedural decisions requiring leave of the Court of First Instance under Rule 220.2 are not eligible for suspensive effect. An amendment to Rule 223 now indicates that any ‘discretionary review’ of such decisions by the Court of Appeal under Rule 220.3 will similarly not have a suspensive effect, nor will cost appeals under Rule 221.3. On a related note, Rule 370 (Court fees) has been amended to make clear that fees will be payable for procedural appeals under Rule 220.2 and costs appeals under Rule 221.4.
And finally, Rule 346 has a revised procedure for objections under Article 7 of the Statute of the UPC, concerning judicial impartiality. Any complaint of lack of impartiality must now be raised “as soon as reasonably practicable”. Otherwise, it will be deemed waived, to avoid such allegations being held back for later, tactical, use. The new procedure is also less administratively burdensome for the court. Objections will now be referred to the Presidium only in difficult cases, with the decision otherwise being taken by the President of either the Court of First Instance or Court of Appeal, as applicable. It’s up to the panel assigned to the case to decide whether or not to continue proceedings in the meantime.
Kevin Mooney (Simmons + Simmons) gave a presentation on the amendments that led to the new rules of procedure during a two-day seminar organized by V.O. Patents & Trademarks in Amsterdam on July 14-15.