UPC: Need for Speed?
The opening part of the Agreement on a Unified Patent Court (UPC) comments that the UPC “should be devised to ensure expeditious and high quality decisions”. The expeditious nature of the proceedings is reflected in some tight deadlines, requiring parties to gather evidence and prepare arguments in shorter times than in proceedings before most national courts. Overall, the Rules of Procedure of the UPC aim to conclude first instance proceedings within twelve to fifteen months.
UPC proceedings start with a written procedure. The first action is filing and service of a statement of claim. The term for filing a defence depends on the nature of the claim. For an infringement action, the defendant (alleged infringer) has three months to prepare a defence (Rule 23 RoP), possibly including a counterclaim for revocation.
For a revocation action, the defendant (proprietor) has only two months to prepare and lodge a statement of defence (Rule 49 RoP). Two months is a very short period of time to review the statement of claim, formulate a response and gather any expert and experimental evidence required in support of the patent. Any counterclaim for infringement also needs to be filed in this two-month term, together with the evidence for any alleged infringement.
If translations are needed, these two and three month terms for response seem like very short amounts of time.
Clearly these timescales for defence will require fast action by patent proprietors and alleged infringers. On top of this, the UPC allows service of claims for revocation or a declaration of non-infringement to be made to a European patent attorney (EPA) recorded as appointed representative on a national patent register (Rule 271.3 RoP). Considerable time may have elapsed between the EPA handling the case when it was granted and the statement of claim being filed, and the proprietor may not have kept the EPA updated on changes of correspondence addresses or, indeed, changes in ownership of the patent. The time taken to get the statement to the correct party could eat into the already short deadlines for taking action.
Aside from the quick turnaround for filing a defence, the UPC keeps the heat on throughout the written proceedings with replies to defences and counterclaims typically due within two months and the deadline for a rejoinder (a reply to the reply to the defence) being one month.
A quick conclusion to proceedings can clearly be desirable in terms of ensuring legal certainty. Ultimately, however, the short time available to prepare a defence to a challenge against a patent may dissuade proprietors from using the UPC. The speed of proceedings is another reason that opting European patents out of the jurisdiction of the UPC during the transitional period may be attractive.
That said, it shouldn’t be assumed that filing an opt-out will save you completely from the short deadlines provided by the UPC. There is nothing to stop a claimant from filing a statement for revocation against an opted-out European patent at the UPC: all that happens is the claimant is informed that an opt-out exists, providing a chance to withdraw or amend the statement of claim (Rules 16 and 47 RoP). On receipt of the statement for revocation, it is up to the proprietor for an opted-out patent to file a preliminary objection challenging the jurisdiction of the UPC on the basis that a valid opt-out has been filed (Rules 19 and 48 RoP).
The deadline for a preliminary objection along these lines is one month from service of the statement of claim. Add to this the possibility of serving the statement of revocation the day before Christmas on an EPA who does not have up-to-date contact details for the proprietor, and it is easy to see the proprietor only having only one or two weeks (if not days) to prepare and file a preliminary objection. If the deadline passes with no preliminary objection filed, then Rule 19.7 RoP provides that the proprietor’s actions shall be treated as “submission to the jurisdiction and competence of the Court”: so much for having carefully filed an opt-out for the patent during the sunrise period. But even replying with a preliminary objection does not stop the three month deadline for filing a defence, meaning that if there is concern that the opt out is invalid, a full defence will still need to be prepared within three months of the statement for revocation.
The UPC clearly has a need for speed. This will be welcome news to many parties who wish to increase legal certainty and reduce costs. However, proprietors will need to be ready to act quickly. It would also be advisable for proprietors to consider checking that the patent attorneys recorded as representatives for their cases will be able to contact the proprietor promptly, should a statement of revocation arrive in their inbox.