Unitary Patent and the UPC: a talk by Neil Feinson at the Westminster Legal Policy Forum

I was fortunate enough to attend last week’s seminar of the Westminster Legal Policy Forum in London. An overview of the seminar will appear on IPcopy later. This post will instead focus on one of the keynote addresses given by Neil Feinson, Director of International Policy, IPO and UK Representative, UPC Preparatory Committee.

“A cross-border, public sector IT Project. What could possibly go wrong?” *

So began a brief run through of the issues facing the various working groups of the Preparatory Committee, the IPO’s progress with the IT system and the latest news on the Rules of Procedure, fees timetable and other tidbits relating to the unitary patent package.

Neil noted that the Unified Patent Court Agreement is silent on a number of issues that cause operational problems in delivering the new court. In particular, the UPCA is silent on issues such as finance, appointment of staff and beta running. This last issue was also raised in the “Unitary patent and Unified patent court” held in Paris on 4 July a few months ago by Alexander Ramsey (see our post here).

As in the discussion in Paris, Neil noted that the UPCA does not provide a set up period between the ratification of the agreement by the 13^th state and the opening of the court. Potential solutions to this issue are: the “longest night” approach where, following the final ratification, the court is brought into being in the course of one long night; an implicit agreement that there should be setup delay; or a formal agreement via Article 25 of the Vienna Convention.

The longest night approach and implicit agreement approach both have concerns attached to them so the Vienna Convention approach, where all the parties to the UPCA agree that there should be a set up process using Article 25 of the Convention, seems potentially the most promising.

One potential drawback to the Vienna Convention approach is that France is not a signatory to this convention.

In any case, Neil expected that there would be a period of between three and six months between the UPCA coming into effect and the UPC opening its doors for cases.

On the issue of timing Neil seemed to be of the opinion that the “late 2015” official start date was achievable but that the 3-6 month set up period would mean that the UPC would not start receiving cases until mid 2016.

Other Points from the Keynote

• UK Ratification of the UPC Agreement. This is now likely to happen after the General Election next May. The secondary legislation should however be in place before then and the IPO is expected to publish a response to the consultation feedback later this year.
• The IT System. This is an off the shelf system which is regarded as an interim solution to allow the UPC to get up and running. After a few years of operation there is likely to be a review of the system which may then: get accepted as a permanent solution; be upgraded; be replaced with a system built from the ground up. There will be an ITT for the IT system (an ITTIT?) in February 2015 with the expectation that a contract will be placed in June/July 2015 and rollout in November/December 2015. There is, of course, a demo IT system for testing and feedback on the UPC Preparatory Committee website.
• Rules of Procedure (1). There will be a public hearing in Germany on 26 November and publication of the Rules in 2015 (perhaps summer time). The venue for the public hearing will be limited to around 200 spaces so there’s a question over how “public” this will actually be.
• Rules of Procedure (2)/Bifurcation. Apparently the rule relating to acceleration of a central division hearing in cases where an action has bifurcated and the local division has not stayed has been reintroduced in the latest version of the rules. The 17^th draft may be out later this month (according to one of the other speakers at the seminar).
• Representation within the UPC. Neil thought that the powers that be may tend towards a representation regime (under Article 48 UPCA) that is towards the more open end of the possible scenarios. This would allow more people (and therefore presumably more EPAs) to be representatives without needing to jump through too many additional training hoops.
• Unitary Patent Renewal Fees. The possibility that the timetable for publication of the unitary patent renewal fees has slipped yet again was raised! It may now be late 2015 before the fees are fixed. IPcopy can only presume the next logical step for the EPO here is to announce that the unitary patent fees will never actually be fixed but if you sign up to a Direct Debit they’ll take what they need when the time comes.
• UPC Transitional Period (Article 83 UPCA). Neil suggested that there is a clear understanding politically what the opt-out regime provisions mean and there’s no need to clarify them further. Essentially “be careful what you wish for” because the law of unforeseen consequences could make matters worse if you try and clarify these provisions. It is noted that this sentiment was not shared by at least one other speaker and from IPcopy’s point of view it seems that the Article 83 provisions are a total mess and, although there may be a political understanding, there is still confusion for everyone else which is likely to lead to (unnecessary?) legal challenges in the future if the issue is not resolved first.

Mark Richardson 21 October 2014

* For the avoidance of doubt it is noted that this comment from Neil was a joke! From the presentation it appears that work on the IT system is proceeding well.