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Unitary Patent Package – hard-coded bifurcation revisited

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EU flagIn an earlier post we pointed out how the Agreement on a Unified Patent Court appeared, by virtue of Article 47(5), to hard-code or hard-wire bifurcation into the system in instances where a licensee was bringing an infringement action. According to the UPC Article (see below) the defendant would need to start separate proceedings against the patent proprietor in order to challenge the validity of the patent.

In the 15th draft of the Rules of Procedure of the Unified Patent Court there were some amendments to Rule 25 (Counterclaim for revocation) which, on the face of it, appear to address this issue. In this post we take a closer look at the changes.

For ease of reference we note that Article 47(5) states:

The validity of a patent cannot be contested in an action for infringement brought by the holder of a licence where the patent proprietor does not take part in the proceedings. The party in an action for infringement wanting to contest the validity of a patent shall have to bring actions against the patent proprietor.

Rule 25(3) in the 15th draft of the Rules of Procedure now states (text that has been amended since the 14th draft has been underlined, deleted text has been struck-through):

Where the claimant (plaintiff) is not the proprietor or not the only proprietor of the patent (or patents) concerned the Registry shall as soon as practicable serve a copy of the Counterclaim for revocation on the relevant proprietor(s) in accordance with Rule 13.1(e) and shall supply a copy of each document referred to in paragraph 2. The proprietor(s) in question shall become a party (parties) to the revocation proceedings and shall provide details pursuant to Rule 13.1(e) if not already provided by the claimant.

Rule 25(3) therefore seems to be an attempt to bring the proprietor of the patent into an action brought by a licensee where a Counterclaim for revocation is raised. Job done? Possibly. Rule 25(3) as currently presented appears to me to be a bit of sleight of hand that acknowledges the situation created by Article 47(5) while simultaneously trying to provide a solution which effectively makes Article 47(5) a bit toothless. Essentially Rule 25(3) seems to re-write Article 47(5) as follows:

The validity of a patent cannot be contested in an action for infringement brought by the holder of a licence where the patent proprietor does not take part in the proceedings.  but if The party defendant in an action for infringement wanting to contests the validity of a patent the Counterclaim for revocation will be served by the Registry shall have to bring actions against the patent proprietor who shall become a party to the revocation proceedings.

The amendment to Rule 25 appears to be an attempt to overcome the hard-wired bifurcation issue. Whether it will stick is another matter with at least one commentator suggesting that the new rule could be ultra vires. It is also interesting to note that the Preparatory Committee’s Unified Patent Court website stops short from discussing Article 47(5).

Mark Richardson    11 July 2013


1 Comment

  1. Anonymous says:

    I don’t see it as a sleight of hand.

    Art 47(5) states that an action must be brought against the proprietor. Rule 25(3) also states that an action (in the form of a counterclaim ) must be brought against the proprietor.

    I think the purpose of Art 47(5) is to prevent a finding on validity without the proprietor being a party. Rule 25(3) does nothing to undermine that.

    Since an invalid patent cannot be infringed- theoretically invalidity can normally be raised as a defence to infringement rather than the basis for a revocation (whether by claim or counterclaim). Whether that’s ever possible at the UPC Its clear that such a defence can not be raised if the claimant is not the proprietor,

    Possibly more interesting is the possibly implied suggestion of rules 25 and 13 that a proprietor who is not the only proprietor, can file an infringment claim without the other being named.

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