Following comments received as part of the consultation process on the 15th draft, on 6 March 2014, the Preparatory Committee published on its website, the 16th version of the Draft Rules of Procedure of the UPC. The latest draft sets out a number of key changes, including those in relation to Rule 5 (Opt-out provisions), Rule 14 (Languages), and Rule 211(Provisional Measures; Interim Injunctions) but leaves other Rules, such as Rule 37 (Bifurcation), unchanged despite ongoing concerns as to their wording or lack thereof.
In its official notice, the Preparatory Committee stressed that the 16th draft "is not intended as a call for a further round of written comments but for information only." The latest draft is helpfully accompanied by a "comprehensive digest" which highlights the decision taken by the Expert Group. Click here to view the Committee's official notice, the draft itself and the comprehensive digest.
Rule 5 (Opt-Out)
Following the 15th draft there were some concerns over the lack of clarity regarding whether an opt-out for a basic patent will extend to a Supplementary Patent Certificate ("SPC") that is granted on that basic patent at a later date. This ambiguity has to some extent been addressed in the latest draft; Rule 5(2)(a) confirms that the opt-out rule established under Rule 5 will extend to any SPC based on the European Patent. Where the SPC is granted subsequently to the opt-out application for the basic patent, Rule 5(2)(c) now states that the opt-out shall take effect automatically on the grant of the SPC.
Rule 14 (Languages)
In the 15th draft, Rule 14 was altered to include the following wording "Statement of Claim shall be drawn up in the language in which the defendant normally conducts its business in its Contracting Member State." A note to Rule 14.2 (included in the 16th draft) explained that it had become clear in consultation following the 15th draft that the wording of the Rule was not practicable and therefore the following two alternatives were proposed:
1. A contracting Member State hosting a local division may designate more than one of its official languages under Article 49(1) of the Agreement and notify the conditions under which the panels of the vision must or may use one of these languages as language of the proceedings. The same applies to the official language(s) designated by Contracting Member States sharing a regional division and to the official language(s) designated under Article 49(2).
2. Where a defendant has his domicile or principle place of business in a Contracting Member State hosting a local or participating in a regional division for which several languages have been designated pursuant to Article 49(1) and/or of the Agreement, and where the action could not be brought pursuant to Article 33(1)(a) of the Agreement before any other local or regional division, the Statement of claim shall be drawn up in the official language of the Contracting Member State, or in case of a Contracting Member State having several official regional languages in the official language of the region in which the defendant has his domicile or principal place of business.
A narrow majority favoured Alternative 1 but both alternatives have been provided in the 16th draft for further consultation by the Preparatory Committee.
It seems that neither option resolves the problem of the wording of 14.2 as presented in the 15th draft; namely the conflict that it poses to Article 49 of the UPC Agreement which provides Claimants with a choice of language in which to bring the proceedings. In order to reconcile this conflict it seems most sensible to introduce a simple rule whereby it is the Claimant that choses the language of the proceedings. Anything less would arguably be too onerous and uncertain for a Claimant.
Rule 37 (Bifurcation)
Under the 15th draft, Rules 37(4) and 118(3)(b) require the local and regional divisions hearing any infringement action, to stay the case where there is a "high likelihood" that the relevant patent claims of the patent will be held to be invalid. There are concerns that this threshold is (a) too high, in that it is likely to unjustifiably favour non-practising entities with weak patents, and (b) undefined, in that there are no requirements set out which must be met in order to satisfy the threshold. This is likely to result in inconsistent practices arising between different national divisions. Despite these concerns the wording of Rule 37(4) remains unchanged in the 16th draft.
Rule 211 (Provisional Measures: Interim Injunctions)
Rule 211(1)(a) of the 15th draft gave judges the discretion to make orders based upon the merits of the case. This raised concerns about the divergence of local and regional court practices when issuing injunctions. With the objective of adopting a uniform approach, mandating the requirements an applicant must satisfy before a judge will grant an injunction arguably needed to be included in the 16th draft. In the 16th draft, wording has been inserted at Rule 211(3) as follows; "the Court shall in the exercise of its discretion weigh up the interests of the parties and, in particular, take into account the potential harm for either of the parties resulting from the granting or the refusal of the injunction." Although this wording provides limited additional guidance, the Committee could arguably have gone much further.
The draft will now be examined at the level of participating EU-Member States by the Legal Group of the Preparatory Committee. Despite the absence of any further written submissions, comments on all suggested amendments to the draft since the written consultation will be welcomed, but at an oral hearing, led by the Legal Group, which is due to take place later on this year. A date has not yet been finalised.
Article written by Caroline Bass, Trainee Solicitor and Beatriz San Martin, Partner in the IP team at Fieldfisher.
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