The Unitary Patent system is doing much better than expected, with almost 80 cases in the first six months and about 20-25% of new European patents converted to UPs, according to Paul England. He is senior counsel at Taylor Wessing and co-author of the Practitioner’s Guide to the Unified Patent Court and the Practitioner’s Guide to European Patent Law (2d edition). Kluwer IP Law interviewed him and asked what his first impression was of the functioning of the system, which entered into force on 1 June of this year.
‘I was cautiously positive before the court began, but it has exceeded my expectations: I remember predicting that there would be 80 cases in the first year, but we are approaching that number in the first six months. I was less confident about Unitary Patent uptake, but this too is proving popular: I estimate about 20-25% of new European patents are being converted to UPs. This is excellent.
Another indicator of early success is the diversity of users. These range from small companies to big family names and they are operating across numerous technology sectors.
Someone commented to me that the UPC is an “earthquake” in the patent landscape. Perhaps a slow-motion earthquake is more accurate, but you get the picture.’
What are issues and decisions you’re particularly looking forward to? Have there been surprises so far?
‘There haven’t been any big surprises so far – everything has been dealt with as would be expected from the rules and I have been impressed with the pragmatic and sensible approach taken by the judges. I do think a better balance needs to be struck on access to pleadings and evidence. With one exception, requests for these have been rejected so far but the default ought to be that they are allowed unless there are specific reasons for protecting the confidentiality of the document concerned. However, this balance will hopefully come from the Court of Appeal.
There are all sorts of substantive patent law decisions that I am looking forward to seeing, such as on scope of protection of claims, but we will have to wait for these to come out next spring after the first oral hearings. In the meantime, as an English lawyer, I am looking out for someone to try a ‘long-arm’ preliminary injunction that reaches the UK. But I haven’t seen one yet!’
Are there differences in the way the many local and central divisions operate and/or decide? Or is it too early to say?
‘It is early days, but I am interested to see if the other divisions follow the model that has been set by the Munich local division on preliminary injunctions. This court has made a good start on these and in particular it has been clear that the approach being taken is its own UPC approach. That is important at this early stage because it underlines that the UPC is a new jurisdiction and not captive to the way any one country does things. Hopefully the other divisions will follow suit.
It remains to be seen, but I do think there will be significant differences between the local divisions on how they handle expert evidence: whether they will rely on party appointed expert evidence seriously, given the expert duties in place, or whether they will rely on the technical judges or a court appointed expert. The first option is much to be preferred given the importance of detailed and comprehensive expert evidence in patent cases, particularly on validity.’
You’re based in London. As a specialist in a non-UPC-member state, how does the new system influence your activities?
‘The UPC occupies a great deal of my time now, often all of it, and I see myself as a UPC lawyer first and an English lawyer second. Indeed, all the Taylor Wessing European patent offices, including London, are now operating as a single, closely integrated UPC team that covers the whole system. Advising that team and our clients on UPC actions, after years of preparing for the court, has been a new and exciting turn in my career.’
Apparently, many cases are being filed in the German language, also the German divisions are most popular. What is your view on this German predominance in the system?
‘I think the popularity of the German divisions is in part a continuation of the large volume of cases that have always been filed in the German national courts. Many of them are quite local to Germany. It may also be because plaintiffs are accustomed to the German bifurcated system, where plaintiffs have a procedural advantage. Although that system is not replicated in the UPC I think the perception of plaintiff advantage has carried over.
I also think the other divisions will catch on, such as the Hague local division where the judges have huge experience of infringement and validity.’
A lot has been said about the CMS of the UPC. What improvements would you like to see?
‘It is predictable of course that any new IT system will have teething problems, particularly one as complex as this. The judges seem to be handling it well however and it will improve over time. More difficult is the public part of the CMS, which I think could be improved by an increase in transparency and smoother navigation of the user experience.’
Which prediction about the Unitary Patent system has proved completely wrong?
‘That parties would avoid it.’
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The Unitary Patent system might be an earthquake in slow motion, but probably not in the meaning thought in the article.
There are so many important legal problems which have been carefully swept under the carpet. As examples it is possible to quote the withdrawal of the UK of a treaty without any exit clause, the decision of the presidium of the UPC and of the Administrative Committee of the UPC under Art 87(2) UPCA in dealing with an amendment of Art 7(2) UPCA. On top of this the VCLT has been carefully ignored.
Those problems are such that the legal basis of the UPC can be questioned and could lead to the conclusion that the UPC is not a court according to Art 6(1) ECHR.
Up to now, no legally sound argumentation has been presented by the staunch supporters of the UPCA.
Besides Brexit and art87(2) UPCA, there is also the bigger problem of compliance with the EU treaties (art267tfeu) which was also swept under the carpet. Moving EU law outside of the framework provided by National Courts made the CJEU dissolve intra-EU investment courts in Achmea case.
Agreed!
Another aspect which has never been checked is the conformity of the language regimen of the UPC with the London Protocol on Art 65 EPC, on translations.
A EP patent granted in one of the official languages of the EPO does not need to be translated to be validated in DE, FR and UK. Why does then a UP needs not to be translated only when it is in English? Even if this measure is only transitional, such a requirement is quite odd.
I would not give a ranking to the problems. Each one can on its own be lethal for the UPCA.
Klaus Lehne, rapporteur on the UPC, was a Taylor Wessing employee. Better than QatarGate.
I once worked in a project with a few hundred employees. Half way through the project the management informed us in an impressive presentation how successful we were and that we could not fail. 3 (in words three) days later the employees were informed that the project was cancelled. Since this time I’m kind of careful when someone goes “hallelujah” 😉
Earthquake is an interesting choice of analogy. Some are minor and hardly noticed while others are truly disastrous. Where do you situate the UPC? Closer to one extreme or the other? Somewhere in the middle? More importantly do they ever change anything? Or aren’t we all concerned with things turning back to normal as soon as possible?