Position Paper concerning the Draft Agreement on a Unified ... - epi

Institut der beim Europäischen Patentamt zugelassenen Vertreter
Institute of Professional Representatives before <strong>the</strong> European Patent Office
Institut des mandataires agréés près l´Office européen des brevets
<strong>Position</strong> <strong>Paper</strong> <strong>concerning</strong> <strong>the</strong> <strong>Draft</strong> <strong>Agreement</strong> on a Unified Patent Court and <strong>Draft</strong>
Statute (16023/11)
1. On 26 October 2011, <strong>the</strong> Polish Presidency issued a revised version of <strong>the</strong> <strong>Draft</strong>
<strong>Agreement</strong> on a Unified Patent Court and <strong>Draft</strong> Statute (16023/11). This version, based on
<strong>the</strong> modified draft agreement of 14th June 2011 prepared by <strong>the</strong> Hungarian Presidency
(11533/11), seeks to adapt <strong>the</strong> previous draft agreement for <strong>the</strong> European and Community
Patent Court to ensure compliance with <strong>the</strong> EU Treaties: this, in response to <strong>the</strong> opinion 1/09
of <strong>the</strong> Court of Justice of <strong>the</strong> European Union (CJEU).
2. The epi has reviewed <strong>the</strong> draft agreements and welcomes <strong>the</strong> progress being made in this
area. Never<strong>the</strong>less <strong>the</strong> epi believes that in order to achieve a system that is fit for purpose,
careful consideration of a number of important points is still required. The epi fur<strong>the</strong>rmore
adopts <strong>the</strong> following position in respect of certain articles of <strong>the</strong> draft agreement.
Article 6 - Composition of <strong>the</strong> panels of <strong>the</strong> Court of First Instance
3. The epi is of <strong>the</strong> opinion that for each local or regional panel, one of <strong>the</strong> judges should be
technically qualified and that <strong>the</strong> three judges of any panel should be of three different
nationalities. If this composition of <strong>the</strong> panels would not be agreed, <strong>the</strong> epi considers that
Article 6 should be reviewed specifically in this respect under Article 58d.
4. The epi can agree to <strong>the</strong> proposal under Article 6(2a) for divisions with a low number of
cases but is of <strong>the</strong> opinion that no two judges on a panel should have <strong>the</strong> same nationality
[see Article 6 (3)], in order to provide procedures, reasoning and decision-making which are
European-based ra<strong>the</strong>r than national.
5. Article 6(5) makes provision for an additional technical judge, giving a panel of four judges.
The epi is of <strong>the</strong> opinion that one of <strong>the</strong> judges from <strong>the</strong> pool should always be a technical
judge (avoiding <strong>the</strong> loss of time with requesting a fourth judge). The epi is particularly
concerned that <strong>the</strong> specific provision for technical judges in revocation actions before <strong>the</strong>
central division [Article 15a(2)(a)] creates <strong>the</strong> erroneous impression that judging <strong>the</strong>
The President | Antonius Tangena
c/o epi Secretariat: P.O. Box 26 01 12 | 80058 Munich | Germany
Tel: +49 89 242052-0 | Fax: +49 89 242052-20 Direct Phone +31 40 2324 620
info@patentepi.com | www.patentepi.com
president@patentepi.com

Institut der beim Europäischen Patentamt zugelassenen Vertreter
Institute of Professional Representatives before <strong>the</strong> European Patent Office
Institut des mandataires agréés près l´Office européen des brevets
infringement of a patent does not require technical knowledge. This role may be fulfilled by a
legally qualified judge who is also technically qualified.
Article 14f to 14i - Substantive law
6. The epi is of <strong>the</strong> opinion that <strong>the</strong> correct place for substantive provisions is in <strong>the</strong> present
agreement ra<strong>the</strong>r than in <strong>the</strong> unitary patent regulation, and considers <strong>the</strong>refore that <strong>the</strong>
reference in <strong>the</strong>se provisions of substantive patent law to “European patent” should be
replaced by “Patent”.
Article 15(1)(g) – Competence of <strong>the</strong> Court
7. The actions referred to in Article 15(1)(g) relate to administrative procedures of <strong>the</strong> EPO
including such matters as appeals in relation to lapsed patents due to failure to timely pay
renewal fees. The epi is concerned that <strong>the</strong> Court should have jurisdiction over such
administrative appeals as this could lead to high costs and additional procedural
complications for relatively minor/simple matters. The epi believes <strong>the</strong>se issues could be
better handled by <strong>the</strong> EPO Boards of Appeal.
Article 15a - Jurisdiction of <strong>the</strong> divisions of <strong>the</strong> Court of First Instance
8. The epi takes <strong>the</strong> position that consolidation of actions in cases where multiple defendants
have been served should be provided for in <strong>the</strong> Rules of Procedure.
9. Article 15a(2) retains <strong>the</strong> possibility of split proceedings. The epi is of <strong>the</strong> opinion that in
general such a possibility is not desirable but recognises that this wording may be necessary
as a political compromise. Never<strong>the</strong>less, with respect to Article 15a(4) <strong>the</strong> epi considers that
if a case is pending before <strong>the</strong> central division, any counterclaim (which would normally be
for infringement) should be dealt with by <strong>the</strong> central division, to avoid <strong>the</strong> expense and
extreme inconvenience of a transfer to ano<strong>the</strong>r division.
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Institut der beim Europäischen Patentamt zugelassenen Vertreter
Institute of Professional Representatives before <strong>the</strong> European Patent Office
Institut des mandataires agréés près l´Office européen des brevets
Article 28 Representation
10. Article 28(2) states that parties may be represented by EPA’s who have appropriate extra
qualifications. Article 28(2a) states “Representatives of <strong>the</strong> parties may be assisted by
patent attorneys who shall be allowed to speak at hearings of <strong>the</strong> Court in accordance with
<strong>the</strong> Rules or Procedure.” None of <strong>the</strong> documents published to date define what is meant by
“patent attorneys”.
11. There is in <strong>the</strong> European Union considerable variation in <strong>the</strong> significance of <strong>the</strong> title
“patent attorney”, from those states in which <strong>the</strong> assumption of <strong>the</strong> title is controlled by an
examination at a level roughly equivalent to <strong>the</strong> European Qualifying Examination (though
<strong>the</strong> syllabus is different) to those states in which <strong>the</strong>re is no examination. To avoid <strong>the</strong>
problems of defining <strong>the</strong> term “patent attorney”, <strong>the</strong> epi proposes that it be replaced by <strong>the</strong>
term “European Patent Attorney”. If this amendment is made, a European Patent Attorney
can assist <strong>the</strong> parties and speak at hearings of <strong>the</strong> Court even though he or she does not
have <strong>the</strong> appropriate extra qualifications referred to in Article 28(2).
12. Article 28(4) refers to <strong>the</strong> rights and immunities including <strong>the</strong> privilege enjoyed by <strong>the</strong>
representatives of <strong>the</strong> parties. This wording should be amended to explicitly include
reference to <strong>the</strong> assisting European patent attorney referred to in Article 28(2a).
Article 58 Transitional period
13. The transitional period is five years from <strong>the</strong> entry into force with an opt-out during those
years for both EP patents or bundle patents granted before <strong>the</strong> entry into force. It is noted
that Article 58(d) provides for a consultation with users at least six years after entry into force
of <strong>the</strong> <strong>Agreement</strong>. If patentees <strong>the</strong>reafter wish to continue to use national courts, <strong>the</strong>y will
have to file national patent applications. The epi is of <strong>the</strong> opinion that a longer transition
period would be necessary, in particular, in <strong>the</strong> light of <strong>the</strong> period for <strong>the</strong> consultation under
Article 58(d).
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