Since the opening of the Unified Patent Court last Thursday, it has received eighteen cases, a spokesperson told Kluwer IP Law. According to a report by patent attorney Joeri Beetz of Keltie LLP, the first European patent to be challenged appears to be EP3666797B1, a ‘very recently granted divisional of an Amgen patent application originally filed in 2008’.
On LinkedIn, Beetz pointed out the patent is classified in class A and should have been dealt with in the London section of the central division (In reaction others pointed out that the first IPC class is C 07 K – originally also destined for London). ‘Will Amgen (…) accept the competence of the Court? Or will they start with challenging the legality of the Presidium’s decision? Or maybe even the legality of the opening of the Court without the originally required UK ratification of the Agreement? Interesting times ahead.’
The judges of the Court of Appeal of the Unified Patent Court took their oath last Monday at the court room in Luxembourg. For the judges of the Court of First Instance, both legally and technically qualified, the oath taking ceremony took place on the court’s opening day last Thursday, at the courtroom of the 1st Civil Chamber of the Palais de Justice de Paris.
Opt-outs
Although the general feeling is that the quality of the new UPC judges is absolutely fine, this doesn’t apparently mean overall enthusiasm about the court prevails. The UPC informed this blog that at 09:30 PM on 30 May, just before the CMS was closed for planned maintenance, the number of opt-outs was 465.247. As of 6 June 2:00 PM, this number had risen to approximately 499.000.
In a LinkedIn report last week, German and European patent attorney Florian Henke had published a similar number. After some calculation and explanation he concluded: ‘Under the assumption that only EP-patents in force have been opted out (no applications, no lapsed EP-patents), the present opt-out ratio can be estimated to be 61%. If pending EP-applications are taken into account, the opt-out ratio could still be higher than 45%.’
The number of opt-outs is much higher than the court counted on. Its budget committee based the expected costs of the opt-out fee reimbursement (2.3.7.), which ‘represent the fee payable to Netservice for each opt-out lodged during the last three months of the PAP (the so-called “sunrise period”)’ on an estimated number of 50.000 opt-outs.
The high number is probably part of the explanation why the CMS of the UPC seemed at the verge of a breakdown over the last weeks. Luckily, the doom scenario of having to lodge documents in hard copy to opt out from the UPC’s competences, which at some point seemed realistic, didn’t materialize. The worst problems are over, according to the court in a report published the first of June. ‘During the morning, due to a high number of users accessing the system at the same time, the UPC Case Management System was occasionally slow and even though it did not cease to function, it was at times difficult to access all the functionalities of the system. The CMS has now been technically reconfigured to better cope with the number of users currently seeking the Courts services. The reconfiguration has been successful and the CMS is now running with an improved performance. (…) This means that pleadings and other documents shall be lodged with the Court in electronic form (…).’
In another LinkedIn report about the UPC, patent attorney Ahsan Shaikh of US law firm McDermott Will & Emery, writes: ‘As we await the reports of its initial cases, we note companies have begun bringing invalidity actions in EU national courts against European patents of their competitors that were previously opted “out” of the UPC. The purpose of those attacks is to prevent the patents from being brought back into the UPC for enforcement, on the assumption that the UPC will be more favorable than national courts for patent owners.’ It would be interesting to hear if others have noticed these kind of actions as well.
Language regime UPC
In the meantime, the court published more information about the language regime. Although for a moment it seemed that his wouldn’t be the case, the UPC local divisions in Germany, France and Italy will also offer English as language of proceedings.
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“As of 6 June 2:00 PM, this number had risen to approximately 499.000.”
I bet for 500.000, so I lost my bet 🙁
“Or maybe even the legality of the opening of the Court without the originally required UK ratification of the Agreement?”
Or maybe the validity of the Brussels1 régulation which wrongly says that the UPC is a common court.
The real question is: why EP3666797B1 has not been opted out?
There are 2 possibilities. It was a mistake – other granted patents in the family have been opted out and this one granted only a few weeks ago. It could have been next one the list. Alternatively, it was intentional and Amgen wanted to test the system. Other divisionals may be filed covering basically the same invention so they have little to lose. If it was the former, someone will be upset.
This is a pretty juicy first case for the new court to cut its teeth on. Hardly an easy starter for 10.
With nearly 500 000 opt-outs, some questions will arise when those patents will be opted-in again.
I am looking at the situation of a potential infringer or a party seeking nullity of a European patent.
During the transitional period, an opt-out is always possible, cf. Art 83(3) UPCA. Provided no action before a national court has been started, such an opt-out can be withdrawn at any moment during the life of the patent, cf. Art 83(4) UPCA. It is clear that an opt-in has an ex tunc and not an ex nunc effect. It will at least end up with the end of the transitional period.
Question:
Is, during the transitional period, an opt-in possible once an action before a national court has exhausted all means of redress and has become res judicata? What is the the value of such a “national” decision if after an opt-in, the UPC looks again at the case?
The question of a possible retroactive application of the UPCA also arises.
If an opt-out is requested by the proprietor, then the EP falls into a bundle of national patents which can only be attacked before separate national courts in the member states in which the patent has been validated. The same applies for an action for infringement. It can only be started at a national court.
When the opt-out is withdrawn, the patent then falls under the exclusive competence of the UPC, and for all member states of the UPC.
For any possible infringer, the situation changes drastically after withdrawal of the opt-out.
From only being able to be summoned before a national court with limited territorial competence, he will then be able to be summoned in front of an international court with a much more extended territorial competence.
If the EP has fallen into a bundle of national patent any action in order to obtain a declarative judgement of non-infringement can only be thought for at national level. It is then only valid in the country in which nullity has been acquired, but at a much lower cost as before the UPC.
Once the patent becomes a UP after withdrawal of the opt-out, then the possible infringer can only obtain a declarative judgement of non-infringement at the UPC. If the patent is susceptible to affect its business, the party seeking nullity will have to act at a much higher cost, to start with the basic fee, before the UPC.
In any case the possibilities offered to a potential infringer or a party seeking nullity of a granted European Patent depend on a decision of the proprietor to withdraw the opt-out.
It is doubtful that such a retroactive change of position to the detriment of a potential infringer, but to the exclusive advantage, and only within the realm of the proprietor is at all tolerable.
This open issue is further exacerbated in view of the possibility of being invited to intervene, cf. R 316 UPCA, and of a forced intervention R 316A UPCA.
I am having difficulty following this. My understanding is that an opted-out EP remains an EP if the opt-out is withdrawn. The only mechanism for an EP to become a UP is filing the necessary application within one month after the grant of the EP. An EP where the opt-out has been withdrawn can still be challenged before the national authorities within the transitional period.
Dear Light Blue,
I can agree with you that an EP will remain an EP even if the opt-out has been withdrawn. The UPC will however be competent whether unitary effect has been requested or not.
According to Art 87(3) UPCA and during the transition period, a proprietor or an applicant has the possibility to opt out from the exclusive competence of the UPC.
According to Art 87(4) UPCA, unless an action has already been brought before a national court in a contracting state of the UPCA, proprietors of or applicants are entitled to withdraw their opt-out at any moment. By withdrawing their opt-out the granted EP will thus be subject to the exclusive competence of the UPC.
The logical consequence is that after the withdrawal of the opt-out, national courts in contracting states of the UPCA are not any longer competent to deal with granted EP if the opt-out is withdrawn during the transition period.
After the transition period of 7/14 years, the UPC will have the exclusive competence to deal with any EP validated in one or more of the UPCA contracting states, whether or not unitary effect has been requested.
As the UPC will be competent to deal with all granted EPs, whether unitary effect has been requested or not, the net result will be that, after the transition period, national courts in UPCA contracting states will lose any competence to deal primarily with patent matters.
Holders of EP validated in any one contracting state of the UPC will lose a revision instance since the UPC does only provides under Art 81 UPCA “a rehearing” similar to a petition for review under Art 112a EPC.
I am not convinced that this has been made absolutely clear to all the parliaments having ratified the UPCA.
Do we not need to be careful to distinguish between, on the one hand, the number of opt-out applications filed, and, on the other hand, the number of patents / applications that have been opted out?
An opt-out application can list multiple patents / applications. Also, there will have been numbers ascribed to opt-out applications that were never filed (eg that were discarded). There is therefore no direct relationship between the number of opt-out applications and the number of patents / applications opted out.
Or am I missing something here? For example, does the number of circa 465k come from an API that independently determines the number of patents and applications that have been opted out?
That seems to be right. I created at least 5 process numbers which I never completed because the CMS did not work at that time. When the system was more stable, I created a new process for the same patent in the first weeks until I noticed that a once created process could be resumed. I assume I was not the only one so there will be blank process numbers.
On the other hand, I did not do any mass opt-out and do not know whether one mass opt-out has only one process number.
On May 30, my process numbers were around 470000.
If there is only one process number for a mass opt-out, the number of opted-out cases will probably have been much higher than 500000 at the end of the sunrise period.