Unified Patent Court Rules of Procedure – close to the finish line

Posted: November 3rd, 2014

Pors-WouterUnified Patent Court Rules of Procedure – close to the finish line, by Wouter Pors, Bird & Bird The Hague

"The 17th draft of the UPC Rules of Procedure was published on 31 October 2014 as a compare document that shows the changes in comparison to the 15th draft. Changes in red have been made by the drafting committee based on the submissions made in the public consultation that was held in 2013. This version was previously published as the 16th draft and has already been discussed widely.

"For this article I assume that the reader is familiar with the UPC system and with the 16th draft. Changes in blue have been made in that 16th draft by the Legal Group of the Preparatory Committee. These will be discussed here. A table explaining the Legal Group’s changes has been attached to the 17th draft; this is similar to the Digest published on the UPC website, which explains the changes included in the 16th draft. The last stage in the public consultation on these rules will be an oral hearing on 26 November in Trier, which will focus on these latest two sets of changes. According to the roadmap that was published on the UPC website in September, the plan is for the Preparatory Committee to agree on a final version of the Rules of Procedure in May 2015."

Read the entire contribution here.

Read the latest draft of the UPC Rules of procedure here.

4 Responses

  1. You indicate that the drafters overlooked the designation of only English in the Nordic division, rendering proceedings in a national language impossible. If I read it correctly prep com has accommodated this possibility by applying rule 14.1 in that case (resulting in 1 option: English pursuant to 14.1b), but excluding applicability of Rule 14.2 Where a contracting state (…) participates in a Regional division for which several languages have been designated (…)
    Or am I missing something?

  2. Wouter Pors says:

    The intention of Rule 14.2 was that “small local operators”, as the Legal Group calls them in the explanatory note, so SME’s who are only on the market in their home country, should only be sued in their national language, which the Legal Group calls their “home language”.
    Article 49(2) UPCA enables a division to add EPO languages to its official language under 49(1). In my view, the Nordic division did not choose English as additional language under 49(2), but as sole official language under 49(1). This can indeed be done by Regional Divisions, as 49(1) can be read that way, but not by Local Divisions, as they always have to designate at least one of the languages of the Contracting Member State.
    So, for the Nordic Division, English indeed is the official language according to Rule 14.1(a) – not 14.1(b), because it is not an additional language as meant in Article 49.2 UPCA.
    The comment correctly says that in such case you don’t even arrive at applying Rule 14.2. That is even in accordance with the text of Rule 14.2 itself, which says that it applies when “several” languages have been designated. Therefore, in the case of the Nordic Division, Rule 14.2(b) does not apply.
    However, this approach still means that SME’s based in the territory of the Nordic Division who are only active in their home country can and shall be sued in English. The Legal Group’s explanatory note is silent about this, but it does defeat the “small local operator” principle, at least for the Nordic Division.
    I wrote that the issue was overlooked. The above comment by @Treatynotifier suggests that the situation is worse.
    Wouter Pors

  3. I understand your point; indeed the privilege for “local SMEs” to have proceedings in their own language is sympathetic. But I see not much legal basis in the convention to use languages in a regional division that are not designated; so this proposal is at least consistent with the convention…
    And even IF rule 14 would allow for regional divisions to proceed sometimes in local non-designated languages, then still Luxembourgish(+Maltese?) SMEs would also need to be accommodated for consistency, because their language arrangements (=Lang of the patent) derives from 49(6) as they won’t have their own local division.

  4. wouter Pors says:

    Dear Treatynotifier,
    You are of course right. My own personal view is that it would have been perfectly fine to have all UPC litigation in English. The majority of scientific literature and the majority of European patents is in English. It is nearly impossible to be involved in patenting without sufficient knowledge of the English language (in that perspective, Rule 14.2(c) is even more absurd). However, politically this has been proven not to be feasible.
    What I wanted to point out is that the aim of the ever ongoing work on Rule 14, which in the opinion of the Legal Group is on the one hand a freedom of choice for the claimant, but on the other hand some protection for defendants, which resulted in the ideas that a small local operator should be sued in his home language, has not been achieved completely. As you point out correctly, both in the case of a Regional Division that does not allow litigation in a regional language and in the case of countries that do not set up a Local Division and do not praticipate in a Regional Division, this goal cannot be achieved by the Rules of Procedure anyway.
    In my view, it is beter to admit that and simply delete Rule 14.2(b) – and in the process also delete Rule 14.2(c). But politics may prevent that.
    Wouter Pors

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