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Union pour la Juridiction unifiée du brevet AACEIPI - AAPI - ACPI - AFEP - AFPPI - AIPPI - APEB - ASPI – CGPME

CNCPI - ICC France - INPI - LES France - MEDEF - Ordre des Avocats Paris

UJUB’s Opt-out Day Grand auditorium du Medef - 55, avenue Bosquet, Paris 7e

Monday 6 June 2016

Morning (9.30-12.30): Presentations

9.30 Welcome Pierre Gattaz, President of the MEDEF

9.45 Definition and legal consequences of the opt-out Édouard Treppoz Professor at Université Jean Moulin Lyon 3, Former Visiting Professor at

Columbia Law School (New-York)

10.15 Opt-out strategy round table Position of the pharmaceutical industry Marie Catillon, Sanofi Position of the telecommunications industry Fredrik Egrelius, Ericsson Position of the mechanical industry Joachim Bee, Robert Bosch GmbH Advice from a patent attorney Blandine Tarrère, Santarelli Moderator Brigitte Carion-Taravella, ASPI

11.00 Formalities for the opt-out 11.00 The provisions of the Rules of Procedure for the opt-out

Pierre Véron, Véron & Associés 11.15 Overview of running the opt-out

Neil Feinson, UK Intellectual Property Office 11.30 Milestones and opt-out technology roadmap

Dario Pizzolante Head, UPC Luxembourg IT team 11.45 Demonstration of opting out under the UPC system

Cristiano Morganti NetService

12.00 Keynote address: The Unified Patent Court – the final steps of preparation Alexander Ramsay, Chairman of the Preparatory Committee of the Unified Patent Court

Lunch (12.30 - 14.00)

Afternoon (14.00 - 17.00): Mock trial and Debate

14.00-16.00 Mock trial on the opt-out

Cast and crew: Presiding judge - judge-rapporteur Marie Courboulay (FR) Registrar Sarah Boucris (FR) The generic manufacturer Generoso’s patent attorney Guillaume de la Bigne (FR) The generic manufacturer Generoso’s attorney-at-law Wouter Pors (NL) The originator Haussmann La Riche's patent attorney Kevin Cordina (UK) The originator Haussmann La Riche's attorney-at-law Emmanuel Gougé (FR) Script doctor and coordinator Pierre Véron (FR)

Debate: 16.00 - 17.00 AACEIPI, AFEP, AFPPI, AIPPI, APEB, CGPME, ICC France, LES France Moderator Thierry Sueur, UJUB

08/06/2016

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Definition and legal consequences of the opt-out

Edouard TreppozProfesseur at the University of Lyon 3

[email protected]

UJUB’s Opt-Out Day

Paris, June 6 2016

What is opt-out?

- Opt-out pertains to default rules and non-mandatory rules.

- Opt-out tell us how to apply the default rule.

- Opt-out requires to choose not to apply thedefault rules, whereas opt-in requires to choosethe default rule.

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Why an opt-out?

- UPCA is applicable to EP’s already granted.

- If not retroactive, this immediate application ofthe UPCA might be considered as a breach of thelegitimate expectations.

- The goal of the transitional period is to soften theimmediate application of the UPCA.

What is not the opt-out in the UCPA:The opt-out is not a jurisdiction clause

- Convergence: both hold on jurisdiction

- Divergences: ° A jurisdiction clause requires an agreement.

° The opt-out only excludes jurisdiction, whereas ajurisdiction clause in meantime excludes and givesjurisdiction.

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What is not the opt-out in the UCPA:The opt-out is not an opt-in.

- The opt-out allows not to choose the UPC.

- In contrast, the opt-out does not allow to choose the UPC.

Cl: to opt-in for the UPC requires to choose the Unitary effect.

Application of the opt-out:What is the subject of the opt-out?

- Not EP with unitary effect.

- EP: the opt-out is for the bundle of patents and not for a single local designation.

- EP application.

- Supplementary protection certificate issued for a product protected by an EP.

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Application of the opt-out:Opt-out by who? (1)

In theory:

- Under article 83 § 3 : « a proprietor of or aapplicant for a EP. »

- If there are more than one proprietor orapplicants, the opt-out has to be agreed on byall.

Application of the opt-out:Opt-out by who? (2)

In practice, beware of the preemptive strike by theclaimant!

- Article 83 § 1 gives to the claimant a choicebetween the UPC and national courts.

- Consequence: if UPC is seized by the claimant, theproprietor is deprived of his opt-out.

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Application of the opt-out:Withdrawal of the opt-out

- Under article 83 § 4, the withdrawal of the opt-out is possible during the transitional period except if an action has already been brought before a national court.

- Consequence : preemptive strike depriving the proprietor of his withdrawal.

Application of the opt-out:Entry into force of the opt-out

- The opt-out shall take effect upon its entryinto the Registry.

- Temporal advantage for the preemptive strikemade by the claimant? Not really!

1) “The registrar shall as soon as practicableenter the opt-out in the Register”2)Partial answer with the sunrise clause.

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Legal consequences:Which actions are concerned? (1)

- Article 83 only mentions the following actions :infringement, revocation, declaration ofinvalidity.

- Article 32 gives exclusive jurisdiction to the UPCfor many more actions, ie action fordeclaration of non-infringement or action forprovisional and protective measure andinjunctions.

Legal consequences:Which actions are concerned? (2)

Does it mean that the opt-out will cover the infringement actionbut not the action of declaration of non- infringement?

ECJ Ship Tatry C-406/92 point 44 : “an action seeking to have thedefendant held liable for causing loss and ordered to paydamages has the same cause of action and the same object asearlier proceedings brought by that defendant seeking adeclaration that he is not liable for that loss. »

Article 83 mentions “generic” actions, including any specific actions mentioned in article 32.

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Legal consequences:The duration of the opt-out?

- The opt-out might last until the end of thetransitional period or until the end of the lifetime ofthe EP.

- The transitional period limits the choice of optingout, whereas the effect of the opt-out should last thelifetime of the EP.

- The consequences, after the transitional period, arethat some EP will still not be submitted to the UPCA,because of the opt-out.

Legal consequences:Is the opt-out limited to the exclusive competence?

- Under Article 83 § 3, « a proprietor … shall have thepossibility to opt-out from the exclusivecompetence of the court. »

- Terminological inference, the court has still aconcurrent competence after the opt-out.

- Context in favor of a larger opt-out concerning thewhole competence of the court.

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Legal consequences:Is opt-out limited to jurisdiction? (1)

- Article 83 § 3 mentions jurisdiction : « aproprietor … shall have the possibility to opt-out from the exclusive competence of thecourt. »

- A literal interpretation favors an opt-outlimited to jurisdiction.


- Article 3 does not contest this interpretation:« This Agreement shall apply to any … Europeanpatent … without prejudice to article 83 ».

This article excludes the application of the UPCA« as far as article 83 itself excludes thatapplication ».

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- A quick conflict of laws reminder: the basicdistinction between choice of law and choice offorum.

- Section 103 of ALI Principles Distinction betweenJurisdiction and Applicable law

1) Competence to adjudicate does not imply applicationof the forum State’s substantive Law.2) A court should not dismiss or suspend proceedingsmerely because the dispute raises questions of foreignlaw.


A classical IP Illustration of the distinction:

- Article 4 of the Brussels Regulation gives jurisdictionto court of the domicile of the defendant, whereasthe infringement is committed abroad.

- Under article 8 of the Rome II Regulation, the courtof the defendant’s domicile will apply the law of thestate where the infringement has been committed.

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The same distinction is still true when it comes to UPC.

The article 71 (b) (3) of the amended Brussels IRegulation gives to the UPC a long arm jurisdiction,including infringement committed outside the Union.

In that specific case, the UPC would apply the law ofthe state where the infringement has beencommitted.


Why should it be different for the opt-out?

See Interpretative note written by the Preparatory Committee:

« It is the Preparatory Committee’s view that if an application for aEuropean patent, a European patent or a Supplementary ProtectionCertificate that has been issued for a product protected by a EuropeanPatent is opted out (or during the transitional period the case isbrought before a national court), the Agreement no longer applies tothe application for a European patent, the European patent or theSupplementary Protection Certificate concerned. As a consequence thecompetent national court would have to apply the applicable nationallaw. »

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What is the binding nature of the Interpretative note?

- The Preparatory Committee has the function to‘prepare practical arrangements and set out a roadmapfor the establishment and coming into operation of theCourt’.

- Not a subsequent agreement under article 31(3) CVLT.


What is the underlying rationality of theInterpretative note?

- To create a mandatory link between the UPC and theapplication of the UPCA (what about arbitration? -seearticle 35 UPCA)

- To avoid any diverging interpretation of the UPCA,since only the UPC would apply and interpret UPCA(why choose a Treaty and not a EU text then?)

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Why does it matter to determine the scope of the opt-out?

Limitations of the patent’s effects may vary upon the application of national laws or UPCA:

- Article 27 (k) decompilation and interoperability exception

- Article 27 (b) and (d) limiting the scope of Bolard’s exception

- No equivalent of the French article L. 613-5 CPI for things introduced from France to extra-atmospheric space.


Why has the holistic approach been described as« manifestly absurd and unreasonable »?

-Because the applicable law would be completelyunpredictable.

-An example: The scope of the Bolard’s exceptionwould change, provided that the claimant decided toseize a national court or the UPC and provided theowner opt outs or not.

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« How puzzling all these changes are! I’m neversure what I’m going to be, from one minute toanother! »

Alice’s Adventure inWonderland-Lewis Caroll

Legal consequences:Is opt-out limited to jurisdiction? YES

The text and the context of the article 83 plead in favor of an opt-out limited to jurisdiction.

The law applicable should be the UPCA, evenwhere a national Court is seized due to theclaimant or an opt-out.

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How to not head into the unknown:

- By aligning local laws to UPCA.

- By a subsequent agreement, signed by allMember States, explaining the interpretationof the article 83.

- By the seizure of the ECJ?

2016-06-06

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Preparation for possible opt-out

Fredrik Egrelius, Ericsson AB, for UJUB Opt-out Day 6 June 2016

Ericsson Internal | 2016-06-02 | Page 2

Ericsson WG work timeline

Q3 Q4Q2

2016

Q1

Ensuring commitment from IT-department and Docketing system provider: opt-out and Unitary Patent.

OngoingCompleted Not yet started

Detailed specification of Docketing system features and GUI.Implementation and testing of docketing

system.Launch!

Education of colleagues.

Strategy workshop preparations.

Strategy workshops. Prepare finalized strategy. Launch!

Preparing education for colleagues.

Provide feedback on tools and national law changes in view of the package.

Prepare possible opt-outsPossible opt-outs

2016-06-06

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› Flexibility for choice of court and more attractive product

› Injunction possibilities

› National court lock-in effect v. centralized attack

› Legal certainty – untested system, practice and partly untested judges

› Possibility to affect the UPC practice

Opt-out considerations


Possible Docketing system implementation

2016-06-06

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06/06/2016

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OPT-OUT DAY

Blandine TARRERE

Conseil en Propriété Industrielle / European Patent

[email protected]

June 6, 2016

Transitional regime (Art.83 UPCA)

European patent European patent European patent with unitary effect « opt-in » « opt-out »

UPC UPC / National courtsnational courts

How to choose ?

June 8, 2016 2

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Unitary effect or not ?

With unitary effect Without unitary effect

Coverage • possibly 25 member states

• dropping a state not possible

• patent owner’s choice

• dropping a state possible at any time

Patent owner • must be the same for all the member states

• can be different from one state to another

Renewal Fees • fixed cost, equivalent to the amount of renewal fees for GB, DE, FR, NL

• depending on the patent owner’s choice for the coverage

Effect of translations Art 4.4 of Regulation 1260/2012 National provisions

Jurisdiction UPC UPC / national courts

June 8, 2016 3

UPC or not ?(from a patent owner’s point of view)

PROS CONS

• Presence of a technically qualified judge for assessing validity

• Validity can be assessed in the language of the proceedings

• When patentability as assessed by national courts is not in line with EPO case law ?

• To shape the case law

• Opposition at EPO could be by-passed (art.123(2) EPC) ?

• Unknown case law

• Opposition at EPO could be by-passed ?

June 8, 2016 4

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UPC or not ?(from a patent owner’s point of view)

PROS CONS

• Wide decision for infringement

• The costs in case of transnational dispute and/or high value dispute

• A fast decision

• Risk of central revocation

• The costs in case of dispute in 1 or 2 member states

• A too fast decision

June 8, 2016 5

Conclusion

ON A CASE BY CASE BASIS

If UPC preferred European patentand conditions of the with unitary effectunitary effect acceptable

If UPC preferred but European patentconditions of the unitary with « opt-in » optioneffect not acceptable

If national courts preferred European patentwith « opt-out » option

June 8, 2016 6

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Conclusion

Want to choose later ? European patent with « opt-in » option

OPT-IN : The other party may choose for you(action for revocation : 20 000€)

OPPOSITION : opt-out before grant of the patent and opt-in after the opposition period?

June 8, 2016 7

!

How to opt-out?

A formality wich looks simple :− an on-line form on the case management system of the UPC

But it is not so simple:

− If the conditions to opt-out are not fulfilled, the opt-out will be ineffective

Correctness can’t be checked by UPC Register….

June 8, 2016 8

!

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Conditions for opt-out

Opt-out must be made by all true legal owners of the European patent and /or SPC holders, for all UPC states

Owners and /or SPC holders must all be named in the request

A door open to challenge entitlement ?

What about the licensee ?

Checking and up-dating internally the ownership will be mandatory before opting-out.

June 8, 2016 9

MARSEILLE146, rue Paradis

13006 Marsei l le

PARIS49, avenue des Champs-Elysées 75008 Paris

Tél: 01 40 55 43 43

TOULOUSE1, rue des Pénitents Blancs31000 Toulouse

Tél: 05 81 76 15 35

Tél: 04 96 10 21 10

Thank you for your attention

Pierre Véron UJUB’s Opt-out DayParis ● 6 June 2016

1The rules of procedure for the opt-out

Paris Lyon

The Rules of Procedurefor the opt-out

Pierre VéronHonorary President, EPLAW (European Patent Lawyers Association)Member of the Drafting Committee of the UPC Rules of Procedure and of the Expert Group advising the UPC Preparatory Committee

UJUB’s Opt-out DayParis ● 6 June 2016

The rules of procedure for the opt-out

Caveat

This presentation is based on the 18th draft of Rules of procedure of the Unified Patent Court released on 19 October 2015

It is very likely that certain changes will be brought with respect to the opt-out

Check the final version of the Rules of procedure before making any real life opt-out

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Article 83 UPC Agreement

The opt-out(3) Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.

(4) Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.

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Rule 5 of the Rules of procedure

3 pages (10 pages DE/EN/FR)

96 lines

1289 words

6503 characters

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Rule 5 of the Rules of procedure

Einreichung eines Antrags auf Inanspruchnahme der Ausnahme-regelung und Rücktritt von der Inanspruchnahme der Ausnahme-regelung

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Lodging of an Application to opt out and withdrawal of an opt–out

Dépôt d’une déclaration de dérogation et retrait d’une déclaration de dérogation


UPC-ish spoken

“To opt out” (but “the opt-out”)

“To withdraw the opt-out”

“To opt in”: “to stay in”

“To be locked in”

“To be locked out”6




Overview

Legal sources

When (sunrise, sunset)?

How?

Fee

Who (representative)?

Who (proprietor)?

What (content)?

For where (territory)?

So what (effect)?

SPCs

Withdrawal

Only one round

Lock in

Lock out

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Legal sources

17 December 2012Regulation 1257/2012 enhanced cooperation creation of unitary patent protection

17 December 2012Regulation 1260/2012 (translation arrangements)

19 February 2013Agreement on a Unified Patent Court and draft Statute

19 October 2015Draft Rules of procedure Unified Patent Court (V18)

http://www.upc.documents.eu.com/PDFs/2015-10-19_Agreement_UPC_DE-EN-FR_and_Rules_Procedure_UPC_DE-EN-FR_Draft_18.pdf

subject tolegal

scrubbing!




The main publicly available documents can be found on

www.upc.documents.eu.com

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UPC’s FAQ

10https://www.unified-patent-court.org/faq/opt-out




For what?

European patent (even expired) European patent application SPC based on a European patent not a European patent with unitary

effect rule 5 (10) provides that if an opt-out

has been made or a patent application which matures in a unitary patent, this opt-out is deemed to be withdrawn

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When: sunrise

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Rule 5: “13. Applications accepted by the Registry before the entry into force of the Agreement shall be treated as entered on the register on the date of entry into force of the Agreement.”




When: sunset

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Even after the patent’s expiry:Rule 5: “1. The proprietor of a European patent (including a European patent that has expired)…”

Before the end of the 7-year transitional period:Art. 83 UPCA: “To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period”

Except in case of lock-in (see below)


Until when?For the life of the patent

Opt-out’s effect lasts also after the end of transitional period:

“It was the legislator's objective when providing for the possibility to opt-out, to give the patent holder the possibility to remove his European patent from the jurisdiction of the UPC for the whole life of that patent. This follows clearly from the fact that an opt-out can be notified until the very last day of the transitional period. The latter would make no sense and would not have been foreseen if the effect of an opt-out was to expire on the last day of the transitional period.”

https://www.unified-patent-court.org/faq/opt-out14




How?

Rule 5: “1. The proprietor of a European patent (including a European patent that has expired) or the applicant for a published application for a European patent (hereinafter in this Rule 5 an “application”) who wishes to opt out that patent or application from the exclusive competence of the Court in accordance with Article 83(3) of the Agreement shall lodge an Application (hereinafter in this Rule 5 an “Application to opt out”) with the Registry.”

The Application can only be lodged in an electronic form

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Fee

Rule 5: “5. The applicant for an opt-out shall pay the fixed fee in accordance with Part 6. The Application to opt out shall not be entered in the register until the fixed fee has been paid. One fixed fee shall be payable in respect of each European patent or application for which an Application to opt out has been filed, including any supplementary protection certificate based on said patent or application.”

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FREE!Decision Prep Com

25/02/2016




Who (representative)?Rule 5: “4. Rule 8 shall not apply to Applications to opt out and to Applications to withdraw made pursuant to this Rule 5. Where a representative is appointed, such a representative may include professional representatives and legal practitioners as defined in Article 134 EPC in addition to those referred to in Article 48 of the Agreement.”

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Rule 8 – Party and party's representative1. A party shall be represented in accordance with Article 48 of the Agreement unless otherwiseprovided by these Rules [Rules 5, 88.4 and 378.5].

ARTICLE 48 UPCA Representation

(1) Parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State.(2) Parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.


Article 134 EPC

Representation before the European Patent Office

(1) Representation of natural or legal persons in proceedings established by this Convention may only be undertaken by professional representatives whose names appear on a list maintained for this purpose by the European Patent Office.(2) Any natural person who(a) is a national of a Contracting State,(b) has his place of business or employment in a Contracting State and(c) has passed the European qualifying examinationmay be entered on the list of professional representatives.(3) During a period of one year from the date on which the accession of a State to this Convention takes effect, entry on that list may also be requested by any natural person who(a) is a national of a Contracting State,(b) has his place of business or employment in the State having acceded to the Convention and(c) is entitled to represent natural or legal persons in patent matters before the central industrial property office of that State.Where such entitlement is not conditional upon the requirement of special professional qualifications, the person shall have regularly so acted in that State for at least five years.(4) Entry shall be effected upon request, accompanied by certificates indicating that the conditions laid down in paragraph 2 or 3 are fulfilled.(5) Persons whose names appear on the list of professional representatives shall be entitled to act in all proceedings established by this Convention.(6) For the purpose of acting as a professional representative, any person whose name appears on the list of professional representatives shall be entitled to establish a place of business in any Contracting State in which proceedings established by this Convention may be conducted, having regard to the Protocol on Centralisation annexed to this Convention. The authorities of such State may remove that entitlement in individual cases only in application of legal provisions adopted for the purpose ofprotecting public security and law and order. Before such action is taken, the President of the European Patent Office shall be consulted.(7) The President of the European Patent Office may grant exemption from:(a)the requirement of paragraphs 2(a) or paragraphs 3(a) in special circumstances;(b) the requirement of paragraph 3(c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way.(8) Representation in proceedings established by this Convention may also be undertaken, in the same way as by a professional representative, by any legal practitioner qualified in a Contracting State and having his place of business in thatState, to the extent that he is entitled in that State to act as a professional representative in patent matters. Paragraph 6 shall apply mutatis mutandis.

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Who (proprietor)?

Rule 5: “1. The proprietor of a European patent (including a European patent that has expired) or the applicant for a published application for a European patent (hereinafter in this Rule 5 an “application”) who wishes to opt out that patent or application from the exclusive competence of the Court in accordance with Article 83(3) of the Agreement shall lodge an Application (hereinafter in this Rule 5 an “Application to opt out”) with the Registry.”

The licensee cannot opt out (think of this in your license agreements)

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Who (co-ownership)?

Rule 5 (1): “(a) Where the patent or application is owned by two or more proprietors or applicants, all proprietors or applicants shall lodge the Application to opt out.”

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Who (registration in patent registers)?

Rule 5 (1): “(a) …Where the person lodging an Application to opt out is not recorded as the proprietor or applicant in the registers referred to in Rule 8.5(a) and (b), respectively, the person shall lodge a declaration pursuant to paragraph 3(e).”

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Rule 8:5. Subject to paragraph 6, for the purposes of proceedings under these Rules: (a) in relation to the proprietor of a European patent, the person entitled to be registered as proprietor under the law of each Contracting Member State in which such European patent has been validated shall be treated as the proprietor whether or not such person is in fact recorded in the register of patents maintained in such Contracting Member State (hereinafter “national patent register”); and (b) in relation to the applicant for a European patent, the person entitled to be registered as applicant whether or not such person is in fact recorded as such in the European Patent Register kept by the European Patent Office.


What (content)?Rule 5: “3. The Application to opt out shall contain: (a) the name of the proprietor or applicant […], and all relevant postal and, where applicable, electronic addresses; (b) where such proprietor, applicant or holder have appointed a representative, the name and postal address and electronic address for service of the representative; (c) details of the patent and/or application including the number; (d) details of any supplementary protection certificate granted based on the patent concerned, including the number; and (e) for the purposes of paragraph 1(a), a Declaration of proprietorship that the person lodging the Application to opt out is the proprietor or applicant pursuant to Rule 8.5 and entitled to lodge the Application to opt out.”

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For where (territory)

Rule 5 (1): “(b) The Application to opt out shall be made in respect of all of the Contracting Member States for which the European patent has been granted or which have been designated in the application.”

What about the Member States which will ratify only after the entry into force of the Agreement?

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So what (date of effect)?

Rule 5: “6. Subject to paragraph 5 the Registrar shall as soon as practicable enter the Application to opt out in the register. Subject to paragraph 7, the opt-out which meets the requirements laid down in this Rule shall be regarded as effective from the date of entry in the register. If the requirements are missing or incorrectly recorded, a correction may be lodged with the Registry. The date of entry of the correction shall be noted in the register. The opt-out shall be effective from the date of correction.”

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Supplementary protection certificates (SPC) are linked with the patentRule 5: “2. An Application to opt out or an Application to withdraw an opt-out pursuant to paragraph 8 (hereinafter in this Rule 5 an “Application to withdraw”) shall extend to any supplementary protection certificate based on the European patent. (a) Where any such supplementary protection certificate has been granted at the date of lodging the Application to opt out or the Application to withdraw, the holder of the supplementary protection certificate shall, if different from the proprietor of the patent, lodge the Application to opt out or the Application to withdraw together with the proprietor. (b) Where any such supplementary protection certificate is granted subsequent to lodging the Application to opt out, the opt-out shall take effect automatically on grant of said supplementary protection certificate.”

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Withdrawal of the opt-outRule 5: “8. A proprietor of a patent or an application the subject of an opt-out pursuant to this Rule may lodge an Application to withdraw in respect of the patent or application, but not in respect of different Contracting Member States for which the European patent has been granted or which have been designated in the application. The Application to withdraw shall contain the particulars in accordance with paragraph 3 and shall be accompanied by the fixed fee in accordance with Part 6; paragraph 5 shall apply mutatis mutandis. Subject to the receipt of the fixed fee the Registrar shall as soon as practicable enter the Application to withdraw in the register and the withdrawal shall be regarded as effective from the date of entry in the register. Paragraphs 1(a) and 6 shall apply mutatis mutandis.”

Except in case of lock-in (see below) 26




Only one round

Art 5: “11. A patent or application the subject of an Application to withdraw which has been entered on the register may not thereafter be the subject of a further Application to opt out.”

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Lock-inArticle 83 (3) UPC Agreement: “Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent […] shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.”

Rule 5: “7. In the event that an action has been commenced before the Court in respect of a patent and/or an application contained in an Application to opt out prior to the date of entry of the Application to opt out in the register or prior to the date of correction pursuant to paragraph 6, the Application to opt out shall be ineffective in respect of the patent and/or application in question, irrespective of whether the action is pending or has been concluded.”

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Lock-outArticle 83 (4) UPC Agreement: “Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.”

Rule 5: “7. In the event that an action has been commenced before the Court in respect of a patent and/or an application contained in an Application to opt out prior to the date of entry of the Application to opt out in the register or prior to the date of correction pursuant to paragraph 6, the Application to opt out shall be ineffective in respect of the patent and/or application in question, irrespective of whether the action is pending or has been concluded.”

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1, rue Volney75002 ParisTel. +33 (0)1 47 03 62 62Fax +33 (0)1 47 03 62 69

3, cours Charlemagne69002 LyonTel. +33 (0)4 72 69 39 39Fax +33 (0)4 72 69 39 49

[email protected]

Thank youPierre Véron




“To stay in or to opt out?”

that is the question.

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08/06/2016

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UJUB Opt-out Day – the process of opt out

Neil FeinsonInternational Policy DirectorUK IPO

The opt out

Article 44 UPCA - The Court shall make best use of electronic Procedures…

Article 83(3) UPCA – transitional regime – provision for opt out from jurisdiction of UPC

• The opt out will therefore be effected on line using the Court’s Case Management System (CMS)

• Progress on CMS

• Test environment on-line since September 2015

• Iterations with Rules Drafting Committee and external user workshops across Europe

• API publicly available for developer testing since May 2016

• Remaining tasks – stress testing, adaption to final rule changes

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Opt-out Milestones

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Opt out process

• Opt out will be possible from before the formal opening of the court – the so-called “sunrise period”

• Timing of sunrise period• not before period of Provisional Application of Agreement

• possibly once 13th ratification has been deposited thus giving a 3 month sunrise period

• Constraints around choice of timing – legal existence and physical resources

• Manual and bulk opt out possibilities

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On-line User Interface (UI) and Application Programming Interfaces (APIs)

• On Line User Interface• Public Search in Opt-out register• User Registration and Authentication• Manual input of Individual Opt-out and Withdrawal

applications• Manual input of Multiple Opt-out and Withdrawal

applications• Automated issuing of document and publication on register

• APIs (v.2.0)• Authentication and Key registration• A2A availability of Register Search functionalities• A2A registration of Applications for Opt-out and Withdrawl

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Unauthorised opt out

• Unauthorised = both erroneous and/or malicious

• Checks on acquiring a login ie 2FA with SMS

• Speedy and simple procedural remedy – Rule 19 of Rules of Procedure and proposed change to draft Registry Rules

• Importance of keeping a close eye on the public register• monitor manually

• monitor automatically through API

• third-party monitoring services

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Digital Register of Opted out Patents

Register updated live via CMS Data accessible on-line (UI and APIs) Content: all patents with application(s) of Opt-out and Withdrawal

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Balancing security with usability and cost

• Concerns have been raised at the possibility of unauthorised opt out

• Possible additional safeguards:• Upload copy of practice certificate/power of attorney/letter of instruction

• Letter to physical address

• Fixed line call back (multilingual robot)

• Long term – work integrate reliable online identity and trust services under the EU’s e-IDAS framework as they become available

• Grateful for views on how best to strike this balance

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Why not try for yourself!

https://secure.unified-patent-court.org/login

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The Unified Patent Court

Alexander RamsayChair of the Preparatory Committee of the Unified Patent CourtParis June 6 2016

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When?

• It is still complicated! – Technical preparatory work on schedule!

– Depends on political will of MS – ratifications!

• Stakeholders have a right to know!• Way forward

– PC focus on finish its preparatory work in mid 2016

– Should enter into provisional application late fall 2016

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Provisional application I

– Protocol on Provisional Application (PPA) signed by ministers in Brussels in October -15

– Institutional, financial and organisational articles of the UPCA will apply provisionally when PPA enters into force.

– PPA will enter into force when 13 MS have acceded to the protocol and have at least parliamentary approval to ratify the UPCA

– At least one will wait with the actual deposition of the UPCA ratification – thereby giving us some time!

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Provisional application II• Consequences

– Provisional application will create an international organisation with legal personality

– Bodies of the UPC will be created

– Judges can be employed, we can have a President, Presidium, Registrar

• Uncertainties– Provisional application is depending on national

ratification – creates uncertainty about the timing!

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Major ongoing issues

• Finalise pension/healthcare/social security– PC is cooperating with the International Service for

Remuneration and Pensions - ISRP

• Recruit and train the judges– Launched May 9, closing date July 4, finalisation during

provisional application

• Fine-tune the IT system– Constant process making sure that the CMS functions as

good as possible when the Court start its operations

• Corporate functions and facilities– Putting it all together into a functioning entity

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But when will it happen?

• The Committee is likely to finalize its preparatory work in June 2016

• Provisional application should start in the fall of 2016 – exact timing depends on ratifications

• Reasonable to assume that the Court could start its operations spring 2017

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Ratifications

• Ratifications so far; • AT, • FR, • SE,

• BE, 4(3) to go!• DK, • LU, • MT • PT• FI• (BU)

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Recruitment and training of judges I

• 35-45 legally qualified judges (LQJ)• 50 Technically qualified judges (TQJ)• LQJ mainly part time initially • TQJ all part time initially• Flexibility?

– Scaling up the part time– Reserve list of appointable judges

• Numbers based on case load assumptions – qualified guessing!

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Recruitment and training of judges II

• Launch of application • First screening by the Advisory Panel• Second batch of ET judges to basic training• Preliminary list of most suitable candidates by the

Advisory Panel• Start of Provisional Application• List of most suitable candidates adopted by the

Advisory Committee• Interviews• In parallel advanced training offered to all

candidates• Judges appointed by the Administrative Committee

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