Thursday, November 05, 2015 Reading Material for Unitary Patent: Articles, Rules and drafts

Not much case law for UPC yet

As the unified patent court and the EPO are preparing for the start of the unitary patent, the amount of rules is increasing. At the moment, I count ten documents with articles and rules that will govern the unitary patent and unified patent court. In this post I'll try to make a comprehensive list of the primary sources on the unitary patent. 

EU level regulations

At the EU level there are two regulations. These regulation dating from 2012 establish among other things the unitary effect, applicable law, and translations agreements. Below I have also included the decision from 2011 that allowed is the unitary patent to proceed without Spain and Italy. (Although Italy has joined later after all.)

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.
The document is available at Eur-lex.
Status: final

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.
The document is available at Eur-Lex.
Status: final

2011/167/EU: Council Decision of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection.
The document is available at Eur-Lex.
Status: final

Unified Patent Court

The unified patent court is established in the Agreement on a Unified Patent Court. This agreement between EU members has been signed by most of EU member states but is not yet fully ratified. The agreement established the unified patent court (UPC) and its competency. Detailed rules for procedures at the UPC are in a semi-final draft, but cannot be established before the court has been established. A proposal for court fees is available. Recently a protocol was created for the agreement which allows some provision of the agreement to enter into force before the rest of the agreement.

Agreement on a Unified Patent Court
The document is available at the website of the Council of the European Union.
Status: Ratified by 8 member states, awaits the ratification by 5 more states which must include Germany and the United Kingdom.

Preliminary set of provisions for the Rules of Procedure (“Rules”) of the Unified Patent Court
The document is available at the website of the unified patent court.
Status: 18th draft, Adopted by the Preparatory Committee on 19 October 2015. Must be adopted by the Administrative Committee of the UPC, which does not exist yet.

Rules on Court fees and recoverable costs
The document is available at the website of the unified patent court. 
Status: Draft (Consultation Document)

Protocol to the Agreement on a Unified Patent Court on provisional application
The document is available at the website of the unified patent court.
Status: Signed by 7 participating member states, does not enter into force until 13 States have informed the depositary that they have received parliamentary approval for the UPC

EPO

The legal basis for the unitary patent is found in the EPC (Articles 142-149a).

European Patent Convention
The document is available (pdf) at the website of the EPO.
Status: final

Draft Rules 1–24 relating to unitary patent protection
The document is available (pdf) at the documentation page at the EPO of the Select Committee
Status: Draft



Adjusted proposals for the level of renewal fees for European patents with unitary effect
The document can be found here. I do not have an official link.
Status: Draft? ('adopted in principle' by the Select Committee)

Photo "Leather Bound Books" by THOR obtained via Flickr  under a  CC-By license

Monday, September 14, 2015 New Draft Rules for European Patent Litigation Certificate publised

Will graduation for the European Patent Litigation Certificate look like this?

 The Preparatory Committee has agreed on a new draft for the Rules on the European Patent Litigation Certificate and other appropriate qualifications. The new draft is available on the website of the unified patent court. Also an Explanatory memorandum is published.

The Unified patent court allows parties to be represented by European Patent Attorneys instead of lawyers. The attorney either needs to pass an exam and get the European Patent Litigation Certificate or he must have other qualifications. The European Patent Litigation Certificate ensures that the attorney has knowledge of the rules of procedure of the UPC, relevant law, and advocacy skills. The other qualifications include experience and grandfather rules for existing certificates.

We have discussed a previous draft of the rules before (e.g., here and here). Compared to the draft that we discussed previously, I found the following changes are noteworthy:

An institute that can issue the certificate no longer needs to be established in a contracting member state. It is sufficient to be established in a member state of the European union. This means that, e.g., a university in Spain could start a course to get the certificate. The course may be given in a language of a non-contracting state, e.g., Spanish.

The 'grace period' for existing institutes has been reduced from 3 years to 1 year (see below). Allowing institutes form non-contracting states may become important for this reason. Otherwise, a country that is a bit late with ratifying the agreement could jeopardize the accreditation of its institutes.

The new rules also extend the allowable institutes from universities and non-profit educational bodies of higher education to non-profit educational bodies of professional education.

Advocacy skills has been included in the required subjects of the course. The rules have clarified that the required duration of 120 hours are for lectures and practical training (and not for homework).


The list of existing qualifications that will be allowed has been extended. On the other hand, as noted above, the period in which these qualifications are sufficient has been shortened from 3 to 1 year. This means that these institutes should work on getting their accreditation done before the end of one year from the entry into force of the Agreement on a Unified Patent Court.

The new list is as follows (rule 12(a)):

 (i)    Centre d’Études Internationales de la Propriété Intellectuelle, courses leading to the Diploma on Patent litigation in Europe or to the Diploma of international studies in industrial property (specialized in patents);
(ii)    FernUniversität in Hagen, course "Law for Patent Attorneys” and its predecessor, the course “Kandidatenkurs Fischbachau”;
(iii)    Humboldt-Universität zu Berlin, course “Zusatzstudium Gewerblicher Rechtsschutz“;
(iv)    Nottingham Law School, course “Intellectual Property Litigation and Advocacy”;
(v)    Queen Mary University of London, courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;
(vi)    Intellectual Property Regulation Board, “Intellectual Property Litigation Certificate”;
(vii)    Intellectual Property Regulation Board, “Higher Courts Litigation Certificate”;
(viii)    Intellectual Property Regulation Board, “Higher Courts Advocacy Certificate”;
(ix)    Stichting Beroepsopleiding Octrooigemachtigden, course “Beroepsopleiding Octrooigemachtigden”;
(x)    Hungarian Intellectual Property Office, course “Advanced Course in Intellectual Property”;
(xi)    University of Milano, course “Corso di Perfezionamento in Brevettistica”;
(xii)    University of Warsaw, course “Podyplomowe Studium Prawa Wlasnosci Przemystowej”;


A notable one is number (ix). This course is currently required to become a Dutch Patent Attorney. As a consequence national Dutch Patent Attorney who graduated the course will be grandfathered into the system. (I understand that some of the other courses are also required to become a national attorney for the respective state. Can anyone fill me in, in the comments?)

Experience in judging patent cases has been included as sufficient qualification.

Photo FreeImages.com/Margan Zajdowic, used under FreeImages.com Content License. Photo was not changed. 

 

FreeImages.com/Artist’s Member Name.”

FreeImages.com/Artist’s Member Name.”