Institut der beim Europäischen Patentamt zugelassenen Vertreter Institute of Professional Representatives before the European Patent Office Institut des mandataires agréés près l'Office européen des brevets 1 Axel CASALONGA Chairman Litigation Committee AIPLA / epi 15th March 2013 Some aspects of the UPC and RoP Axel CASALONGA Chairman Litigation Committee

The Court 2 Central Division Local Division Local Division Regional Division Regional Division

1st instance local divisions Multinational panels of 3 judges One or two local judges Two or one judge from a pool of judges Upon request of one party or initiative of the panel: – –One additional technical judge 3

Central division 2 legally qualified judges of different nationalities 1 technical judge 4

55 The Central Division PARIS President’s Office London Branch Munich Branch Section A – Human necessities (Agriculture; Foodstuffs; tobacco; personal and domestic articles, heatlh, amusement) Section C – Chemistry; Metallurgy Section B – Performing operations (separating; mixing; shaping; printing); transporting Section D – Textiles; paper Section E – Fixed constructions (Building; earth drilling; mining) Section G – Physics (Instruments; Nucleonics) Section H – Electricity; Electronics Section F – Mechanical engineering; lighting; heating; weapons; blasting

Language of procedure before local division 1. 1.Official language of the country hosting the local division 2. 2.Or one of EPO languages chosen by the country hosting the division 3. 3.Parties may agree to use the language of the granted patent if the panel approves - if not, the case may be referred to the Central Division 6

Language of procedure before local division 4. 4.On grounds of convenience and fairness: - language of the granted patent - at request of one party - or with agreement of both parties 7

Language of procedure before the central division Language of the granted patent: English French German 8

Where to sue for infringement Before the local division hosted in the country of the infringement Or before the local division where one of the defendants is domiciled If one defendant is outside the Contracting States, - before the local division of the infringement - or before the Central division 9

Where to sue for infringement In case of same actions engaged before several divisions, the division first seized is competent for the whole case The parties may agree to bring the action before the Central division 10

Advantages of the central division Always one technical judge Language of procedure: granted patent All 3 judges from different nationalities 11

How to bring a case before the central division Revocation action (patent and SPC) Declaration of non infringement Infringement action – –One defendant outside the Contracting Member States – –No local division where infringement took place – –Following a revocation action – –If both parties agree 12

Other possibilities to have an infringement action handled by the central division Agreement of both parties Choice of the defendant : – –If infringement occurs on the territory of 3 or more regional divisions Agreement of the parties and/or the panel : – –In case of counter claim for revocation in an infringement action pending before a local division 13

Nullity actions Direct actions - must be brought before the Central division Counter claim for nullity - may be handled by the local division (joining infringement and nullity) with an additional technical judge - or referred to the Central division (the local division may stay the infringement proceedings or not) - or the entire case is referred to the Central division if the parties agree 14

The procedure Written procedure Interim procedure -Preparation of oral hearing -Judge rapporteur -at least one interim hearing -determination of the value of litigation Oral hearing: within 1 year 15

The written procedure for the infringement action Statement of claim by plaintiff ⁻ ⁻ possible preliminary objections by defendant (1 month) Statement of defense (3 months) by defendant ⁻ ⁻ possible counter claim for revocation Reply to statement of defense (2 months) by plaintiff ⁻ ⁻ defense to counter claim for revocation ⁻ ⁻ possible application to amend the patent Defense to application to amend the patent (1 month) by defendant ⁻ ⁻ with rejoinder to the reply to statement of defense Reply to defense to amendment (1 month) by plaintiff Rejoinder by defendant Closure of written procedure (further submissions only if allowed by judge rapporteur) 16

Decision on bifurcation (in case of counter claim for revocation) After closure of the written procedure If no bifurcation : ⁻ ⁻ The President of 1st instance allocates a technical judge If bifurcation : ⁻ ⁻ The panel may stay the procedure ⁻ ⁻ Shall stay if high likelihood of nullity 17

The written procedure for the revocation action Statement of revocation by plaintiff Statement of defense (3 months) by defendant ⁻ ⁻ possible application to amend the patent ⁻ ⁻ possible counter claim for infringement Reply to statement of defense (1 month) by plaintiff ⁻ ⁻ possible Defense to counter claim for infringement ⁻ ⁻ possible Defense to application to amend the patent Rejoinder to the reply to statement of defense (1 month) by defendant ⁻ ⁻ possible reply to Defense to amendment ⁻ ⁻ possible reply to Defense to counter claim for infringement Closure of written procedure (further submissions only if allowed by judge rapporteur) 18

The interim procedure The Judge rapporteur: Prepares the oral hearing holds an interim conference for: ⁻ ⁻ Identifying main issues ⁻ ⁻ Clarifying position of the parties ⁻ ⁻ Issuing orders for inspection, evidence, experiments… ⁻ ⁻ Organizing preparatory discussions with witnesses, experts ⁻ ⁻ Deciding the value of the dispute 19

The oral hearing Duration: maximum 1 day Time limit for each party’s oral submissions scheduled by the panel Hearing of witness? Only in exceptional circumstances 20

Appeal Possible appeal against 1 st instance decision Delay: 2 months from the date of notification of the decision Last degree of jurisdiction : final decision ⁻ ⁻ Except if rehearing is granted 21

Provisional measures (summary proceedings) 22 Before action on the merit ⁻ Even without hearing the other party After engagement of the action Procedure : ⁻ Written procedure ⁻ Oral hearing Single judge in extreme urgent cases May be withdrawn and kept confidential Action on the merit must be filed within max 31 days of the decision

Protective letter 23 To be filed with the Registry With the name of the presumed applicant for provisional measures and N° of the patent With facts, evidence and arguments Valid for six months ⁻ can be renewed once

Request for rehearing 24 Criminal act according to a final decision (2 months) Fundamental procedural defect : (2 months from decision) must have been raised before the Court of Appeal (unless impossible) ⁻ failure to order communication of information ⁻ failure to consider a request ⁻ breach of the right to be heard (human rights) Within 10 years from the decision

Rehearing 25 3 legally qualified judges (different panel) Examination as to allowability by judge rapporteur Decision: ⁻ not allowable (unanimity required) ⁻ allowable : proceedings re-opened No suspensive effect Rights of good faith users preserved

Court fees 26 Fees are to be paid for any action (for example): ⁻ infringement action ⁻ counterclaim for revocation or infringement ⁻ provisional measures ⁻ preserving evidence ⁻ determination of damages ⁻ appeal ⁻ protective letter Each fee comprises: ⁻ a fixed amount to be paid when filing the action ⁻ a value based amount (if value exceeds a limit)

Institut der beim Europäischen Patentamt zugelassenen Vertreter Institute of Professional Representatives before the European Patent Office Institut des mandataires agréés près l'Office européen des brevets Thank you for your attention! 27