If everything goes according to the most recent plan, the Unified Patent Court will finally open its doors on 1 June 2023, with the sunrise period starting the first of March. The UK, initially one of the driving forces behind the Unitary Patent system, will not join the opening party, as it withdrew its membership in the aftermath of the Brexit. What will the role of the UK patent courts be in the future? What will UPC litigation bring? Kluwer IP Law interviewed Brian Cordery, partner at UK law firm Bristows, about his expectations.

As a patent litigator and lawyer operating from the UK, how do you feel personally about the start of the Unified Patent Court?
‘Very excited – change is always interesting for lawyers and being part of arguably the biggest change in the global patent landscape for decades is a unique opportunity.  We’re obviously disappointed that we won’t have a local division to appear before, but in some ways that may end up being an advantage for UK practitioners in the system, as we can genuinely advise clients of the merits or otherwise of the possible venues without having to filter out any ‘home field’ preconceptions or prejudices.’

What do you see as the biggest disadvantage of the UK not being a member state of the Unitary Patent system?
‘I think the main thing I feel sad about is the lost opportunity to have created something truly unique in the global patent marketplace; a hybrid of common law and civil law traditions that could have brought the best aspects of each to the fore.  The rules of procedure obviously still have a number of features stemming from the UK’s traditional approach and that is something as UK lawyers we will be looking to use to bring some extra value for clients.’

What do you see as the biggest disadvantage of the Unitary Patent system without the UK participating?
It may be a bit parochial but I personally feel sad about the loss of the UK judges and judicial thinking to the development of the new system.  There are some great judicial names that are already part of the system, but it would have been awesome to have them joined by the likes of Sir Christopher Floyd if that had been possible (other English judges are of course also available!). ’

Will it affect the popularity of the Unitary Patent and/or the UPC?
‘In terms of popularity, I think the lack of UK coverage may have some effect but it’s obviously a different counterfactual to ever really know about – and in any event I think there is still plenty in the system for patentees to get excited about.’

Brian Cordery

Do you expect many cases to be brought before the court in the beginning? Or will everybody wait until there is more clarity about the court’s jurisprudence?
‘There’s certainly a great sense of excitement (and possibly apprehension for some) as the start of the new system moves towards us.  I think it will be a good while before the new Court becomes a default replacement for national litigation, but at an earlier stage we may well see it becoming a relatively regular parallel forum, certainly where multiple patents are in play.’

What are the issues concerning the UPC you’re most curious about? Do you expect cases in which the basic principles of the court will be tested, the compatibility with EU law for example? Or Rule 5, for instance, which your colleague Myles Jelf has described as alarmingly vague?
‘The UPC is, in some ways, a unique experiment – constructing a new court and highly complex set of procedural rules and then setting them going in a big bang all across Europe.  I think most observers expect, therefore, that pretty much every single aspect of the operation of the new system is going to be challenged from the outset.  Ultimately, the interesting issues are probably going to be how the various traditions and approaches to the substantive law questions of infringement and validity end up being harmonised across the Contracting Member States.

Myles’ point about rule 5, I think, is not so much about the substance of the rule change (allowing, or possibly requiring, the ‘opting out’ of all European Patents even those in territories ostensibly outside the territory) but the logic which supposedly underlies that change; that the new Court has jurisdiction over patents in territories beyond those who chose to join, such as Spain and Poland and even territories outside the EU, such as Switzerland and the UK.  Obviously that’s a pretty controversial claim that will lead to some pretty complex jurisdictional battles and even the complications of international anti-suit actions.  The new world certainly won’t be dull though!’

You can litigate at the UPC, can’t you?
‘Yes, I can – although the UK’s withdrawal has not made life easier for us, of course, as the rules require representatives to be authorised to practice before a Contracting Member State which means UK practitioners have to be prepared to re-qualify.  We at Bristows, though, are investing heavily in being ready in that respect for the start of the new system.’

Do you think UK patent attorneys will make sure they get the European Patent Litigation Certificate, so they can represent clients at the UPC? How will this work?

‘UK based EPLC courses will only be accepted on a historical basis up to the cut-off date of the UK leaving the European Union – after that date UK based attorneys will need to find alternative institutions.’

In an interview, Georg Rauh and Richard Ebbink of  Vossius and Brinkhof UPC Litigators told this blog they expect a concentration of patent litigation firms. Do you agree? Where do the UK firms fit in?
‘I think in some ways it will be very difficult to see how the litigation landscape will play out.  One hears quite  a lot of speculation that the German divisions will be very busy and that German practitioners will, therefore, be very busy.  That may well be true, but equally the fact that other divisions now have access to all the same rules and procedures that the German divisions do may ultimately lead clients to embrace those divisions – particularly where they can bring potential wider experience and perspectives.

The UPC judges in Paris and the Netherlands are all very experienced in balancing the merits of infringement and validity arguments in the same action, something which the German judges have not historically done – and similarly judges from the Nordic tradition have much greater experience of evaluating expert evidence through live cross-examination which their German colleagues will not. Apart from anything else, it would be a great shame if that diversity did not end up being a feature of the new system.

In terms of consolidation, the UPC was of course trailered as a cost effective solution that might be attractive to SMEs.  In reality, the consequences of almost pan-European injunctions and damages will mean that cases are incredibly valuable and hugely significant for all commercial clients – against that backdrop we are expecting to see larger teams rather than smaller.  The diverse nature of the Court will, we think, mean that co-counselling is going to become much more commonplace, with clients looking to put together wider teams to represent them and perhaps not put all their eggs into the basket of any one firm.’

Litigation in the UK is very expensive. What will the role of the UK patent courts be in the future?
I think firstly that the ‘the UK is so expensive’ is a bit of a trope that is not as true as our foreign colleagues sometimes make it out to be.  As you know, in German national litigation for example, each ‘case’ cost covers a single patent looked at for infringement only; for significant disputes with multiple patents where validity is in play for all of them the overall costs are not as far apart as they may initially appear to be and I think clients are increasingly aware of that.  Further, the UK Courts have for the last decade or so been very active in developing more streamlined, faster and cheaper judicial possibilities for patent dispute resolution; obviously the Intellectual Property and Enterprise Court for smaller scale disputes, but also the Shorter and Flexible Trial Schemes in the main patent court are all aimed at pushing down costs and time to trial.’

Do you expect UK courts to be influenced by decisions of the UPC, and vice versa?

‘There has been a growing tradition of respect as between the various European patent jurisdictions over the last decades; perhaps driven by the greater engagement that events like the Venice EPLAW judges conference enable.  While national judges obviously don’t blindly follow the parallel decisions of their foreign peers, they do now certainly read them with great interest.

In terms of substantive law, I think you can see that trend in the UK’s embracing finally of a doctrine of equivalence – and from the discussion in the Supreme Court’s Actavis decision which was quite clear in its emphasis that a higher degree of European harmonisation in that respect was in itself a valuable objective.  I think that the UPC will be another forum that will join that growing culture of judicial respect.’

Is there anything else you’d like to mention?
‘Only to reiterate my sadness at the UK not being a part of the UPC and to express a hope that one day that might change now that the stark reality of post-Brexit UK is here. Notwithstanding my disappointment about the UK not being in the system, I think that the UK lawyers and Courts have a very significant role to play on the European patent landscape both within and outside of the UPC.  The English have a saying “May you live in interesting times” which is, apparently wrongly, attributed to an ancient Chinese curse.   Well, this lawyer is excited to be living in such times and looks forward to the future with optimism.’


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10 comments

  1. As a UK and European patent attorney, but not a litigator, not a UK solicitor and not a German Rechtsanwalt, I too am disappointed that the UPC will not be influenced by English common law fact-finding and legal reasoning. I am old enough to have qualified before the EPO got going and have enjoyed being within a leading German firm through the second half of my career. Cross-fertilisation of legal thinking is exhilarating, and benefits our clients.

    The EPC and the EPO have been blending civil law and common law legal thinking, these past 40 years, in the field of patentability and validity. It is not a coincidence that the established case law of the EPO’s Boards of Appeal is the world’s most coherent and rigorous legal resource in this field. What a shame then, that Europe never made it, the extra mile/kilometer, to blending the two legal traditions in the field of patent rights enforcement, to the advantage of our clients, whether they be in North America or East Asia, on a continental mainland or on an island lying offshore.

    1. “the established case law of the EPO’s Boards of Appeal is the world’s most coherent and rigorous legal resource in this field”

      Are you talking about the technical effect doctrine they use to grant software patents, and they tried to codify into law in 2002-2005?

      1. Inter alia, yes. Technical character vs technical effect, the problem-solution approach generally, what is patentably novel, the contribution made by the notion of “plausibility”, and finally (drum roll) the EPO’s notorious self-awarded Gold Standard. The list goes on and on.

        What’s your point? Which jurisdiction does patentability better than the EPO, in your opinion, zoobab?

        BTW, is this you? http://www.zoobab.com/whois-zoobab

    2. The major difference stated between civil law and common law is the actual or perceived role of case law as precedent and in formulating (common) law.
      The Enlarged Board’s (G 3/19) “dynamic interpretation” of Article 53(b) EPC in the light of Rule 28(2) EPC overruling its own precedent case law and obviously largely politically driven makes this, IMO, a bit of a moot discussion.
      Shouldn’t the question be the availability of true judicial review – using US law terms – of EPO’s “agency rule making” [Rule 28(2) EPC]” and “agency adjudication” [G 3/19]?
      How can a simple “agency “like the EPO blatantly, in effect, “revise” Article 53(b), depriving patent and patent rights, without there be a legal recurse to an independent, higher judicial authority. (in the US, inter alia, could file for a writ of mandamus.)

  2. UK poisoned the bill with their “whole case in 12 months”, leaving defendants with only “2 months” to prepare their defense, which will need extra lawyers, and increase the costs of defense.

    The nail in the coffin for industry.

  3. Very surprised that he isn’t aware that Ireland is a common-law jurisdiction that is likely to have a local division in the UPC eco-system.

  4. Whilst Rule 5 might be “alarmingly vague”, Rule 19.7 is just alarming. In essence, purports to have the effect of rendering an opt-out ineffective simply upon the basis that a defendant to a revocation action has (perhaps inadvertently) missed the 1-month deadline for filing a preliminary objection.

    Quite clearly, this is a “dirty trick”, in which a very important substantive right, namely an opt-out, can be invalidated purely on the basis of a minor procedural error and without any safety nets, such as reinstatement. However, it is important to realise that this trick forms only a small part of the overall scheme to make opt-outs extremely difficult, unattractive and/or ineffective. This scheme would even seem to extend to making the practicalities for preparing to opt-out much more difficult than they need to be … by making the CMS hard to access, difficult to navigate and available for only a short period of time (for example, with the fully operational version of the sunrise CMS still being available for 5 working days only, despite the fact that the start of the sunrise period has been pushed back 2 months).

    The con is on!

  5. @richard gillespie

    You are absolutely right, the Irish government has announced a referendum in 2023 to ratify the UPC alongside other issues with the objective of a local division in Dublin. Will we see some UK lawyers apply for Irish citizenship ? The Irish route would be attractive to US and Asian companies as English would be the language of proceedings.

  6. It should not be forgotten that Bristows as well as Simmons & Simmons were staunch supporters of the UPC and also very heavily involved in the setting up of the Rules of Procedure of the UPCA which have taken a lot from English procedure.

    The old tale that “the UPC was of course trailered as a cost effective solution that might be attractive to SMEs” is still up and running.
    On the other hand, we all know that SMEs were no more than a fig leaf behind which the vested interests of the big industries and internationally acting litigation firms hid and lobbied.

    I have been at a few conferences in which the impact on the UP/UPC system was discussed with SMEs. I have not heard one positive view about the UP/UPC by SMEs. There were some representatives of groups of SMEs at recent conferences on the UPC, but it has to be checked whether they are not in fact submarines of the big industry.

    As far as R 5 (1,b) UPCA is considered, it might be vague for some, but the aim of its last amendment was clearly to make opt-out much more complicated so as to insure some work to the UPC from the outset. Proprietors of granted European patents have as rule three months following grant to decide in which countries they want to validate, but they have to declare an opt-out within one month form the same date. They have thus to opt-out for countries for which they have never intended to validate. This is ludicrous.

    Whether the UPC will be able to extend its reach to EU countries which clearly never wanted to participate like Spain, Poland and the Czech Republic, or to countries outside the EU like Switzerland, Norway or Turkey, is still to be seen. It will be interesting to see whether decisions of the UPC are enforceable in those countries. Reasonable doubts are permitted.

    R 5 UPC combined with R 19(7) UPC is no more than a legal mechanism which will end up in a forced opt-in. And we all know which firms are eagerly waiting to fill their already deep pockets.

    Lobbyism has always played a role in European politics and the drafting of legal rules, but with the UP/UPC system it has taken proportions which are hard to believe. The economic necessity of such a system has never been analysed in depth, neither the influence on SMEs. Offering a single door to attack European industry in general and European SMEs is simply suicidal. The number of patents held by proprietors having their seat in UPCA member states is barely 30% of all granted patents. More than 50% of granted European patents are held by proprietors having no seat in Europe. And this should be good for Europe? To sum it up, the UPC is as unnecessary as a gooseberry.

    Due to the extremely short time limits and the outrageously different fees for infringement and validity, it is clear that every move has been made in order to favour patent holders. SMEs and not just industry in general will suffer as the extra time limits are increasing the costs for representation. This is also a scandal. Why has everything to be so quick and precipitated? Now the UK was out, why it was necessary to stick to UK practice? And the annual fees have not be amended when the UK fell out. It is most probable that then the salaries proposed to the judges could not be paid.

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