The official (fifteenth) draft of the rules of procedure of the unified patent court has officially been unleashed on the world (take a look here), and the public consultation has now begun. You have until 1 October 2013 to submit your comments to the preparatory committee (details here), so get writing.
IPCopy has produced a tracked-changes version of the draft rules, comparing the newly-released official fifteenth draft, and the previous fourteenth draft, which you can find here. We’ve been combing through the new draft Rules to see what’s of interest.
You might recall that an unofficial version of the fifteenth draft was leaked back in May, and in an earlier blog post we took a look and what was new back then. Now that the official draft has been released we’re repeating that exercise, so some of these changes might look familiar, but there are a couple of new ones in there too*.
So, without further ado, here’s what caught our eye:
Rule 5 – Opting out (and back in again, but not back out again!) – joint owners, fees, and a sunrise provision
There are quite a lot of revisions to Rule 5, some of which will be more welcomed than others!
IPCopy is pleased to see that Rule 5 now accounts for the situation of joint owners (all owners must apply for the opt out – one owner cannot opt out without the others ).
The opt-out fee, which had previously been the subject of rumour and speculation in UPC circles, has been made explicit, as has a fee for withdrawing the opt-out.
A new clause specifies that once the opt-out has been withdrawn, a patent cannot be opted out again.
Another new clause in Rule 5 sets out for the much hoped-for sunrise provision (more details on this is can be found in ipcopymark’s earlier blog post here).
The drafting committee have also added an interesting Note to rule 5 clarifying certain points in relation to the opt-out:
Note to Rule 5
*The Drafting Committee would like to note, in response to certain written comments received,
that the provisions of Article 83 of the Agreement for opting out are clear and provide for:
(i) a complete ousting of the jurisidiction of the UPC;
(ii) such ousting is, subject to Rule 5.6, for the life of the relevant patent/application and
(iii) covers all designations owned by the proprietor in question.
Rule 13 – Bringing an infringement action – joint owners
Rule 13.1(f) now accounts for joint ownership when bringing an infringement action – if the plaintiff is not the sole proprietor, it must provide evidence to show that it is entitled to commence proceedings.
Rule 25 – Counterclaim for revocation – automatically joining the proprietor
As noted in a previous blog post, Article 47(5) of the Agreement specifies that if a claim is brought by a licensee, the defendant cannot counter-claim for revocation unless the proprietor is joined into the proceedings, which need not necessarily be the case. The fourteenth draft rules are at odds with this, providing for such a counter-claim even if the proprietor is not joined to the proceedings.
IPCopy is pleased to see an amendment to Rule 25(3), which now states that if a defendant counterclaims for revocation in this situation, the counterclaim is served on the proprietor, and the proprietor automatically becomes party to the proceedings.
We’re not convinced this will solve the problem entirely, but it’s certainly a step in the right direction.
Rule 40 – Acceleration of proceedings at the Central Division – no longer applies automatically to a revocation counter-claim
Surprisingly, a deletion from Rule 40 appears to have removed the obligation of the court to accelerate a counter-claim for revocation at the central division if it has been referred by a local or regional division. This means that if a local or regional court chooses to bifurcate, and refers a revocation action to the central division, the central division is under no obligation to accelerate the revocation action.
IPCopy is surprised to see this deletion; it certainly won’t help to placate those with concerns over the possible effects of bifurcation.
Rule 150 – Costs orders - court costs to be included
An interesting addition to the Rules regarding costs orders: the costs order will include costs incurred by the court, for example for translators, as well as those incurred by the successful party.
Rule 211 – Provisional measures – provisional costs awards now included
Something which IPCopy was very intrigued to see: Rule 211, which sets out particular examples of provisional measures that can be ordered by the court, now includes a provisional award of costs.
Rule 286 – What is a lawyer – definition broadened?
which defines the term ‘Lawyer’ in Article 48(1) of the Agreement has been amended to included the statement that “Lawyers within the meaning of Article 48(1) of the Agreement are also persons possessing a law degree (jurist) who are authorised by the Swedish Patent Attorneys Board or equivalent body in a Contracting Member State”. We confess to being a little bemused by this one. Does anyone have any ideas why the Swedish Patent Attorneys Board gets a mention here?
Rule 287 – Privilege – some clarification provided
Rule 287 has been amended to clarify the privilege position: a new clause has been added stating expressly that the definition of a patent attorney encompassed the definition under 134(1)EPC.
Rule 370 – Summary of the new Fees
The following fees have been introduced: a fee for opting out; a fee for withdrawing an opt-out, a fee for an action for compensation for licence as of right; a fee for filing a protective letter (previously this was only listed under the Court of Appeal fees).
IPCopy is interested to know what you’ve spotted in the official draft Rules, and if you’ll be submitting comments to the preparatory committee. Let us know below!
Emily Weal 26 June 2013
*If you’d like to know what’s changed between the leaked and the official versions of the fifteenth drafts, take a look at our tracked version here. Not much has changed - as far as IPCopy can see, the main changes are: the new clause in Rule 5 that prevents re-opting-out once an opt-out has been withdrawn; the change to Rule 286 (the Swedish thing!); and some of the fees added to Rule 370. IPCopy also noted that throughout the draft Rules, ‘case’ has been amended to ‘action’, and ‘plaintiff’ to ‘claimant’.