Patent and Trade Mark Attorneys

Guide to the Unitary Patent and Unified Patent Court Contents

Introduction 1

Part I: The Unitary Patent 2

Part II: The Unified Patent Court 16

Summary: How Dehns can support you 32

Appendix 34

Glossary of terms 38 1

Introduction

The biggest change to the European Under the Unitary Patent system, patent applicants patent system in decades is on its will be able to obtain patent protection across a large part of Europe with only one patent. This will way. Soon – possibly as early as the be simpler, and potentially cheaper, than obtaining start of 2017 – it will be possible equivalent protection under the current system. to obtain a single patent covering Enforcing patent rights across Europe should also be multiple EU countries. This will be simpler, as the UPC’s judgments will be enforceable known as a European Patent with in multiple countries. However, the UPC could also make European Patents more vulnerable to validity Unitary Effect, or informally a “Unitary challenges. The new system will also raise a host Patent”. The rights conferred by a of new procedural and cost-related issues. It is Unitary Patent will be enforceable therefore vital to be aware of the new opportunities, through a new supranational court, and new risks, which the new system might pose for the Unified Patent Court (“UPC”). The your business. UPC will also hear challenges to the The Unitary Patent and UPC systems are complex. validity of European Patents, enabling This guide provides a general overview of key aspects invalid patents to be revoked across of these new systems, so it has been necessary to Europe without the need for separate simplify certain features. Within these complicated and as-yet-untested legal systems there can be no litigation in different countries. “one-size-fits-all” approach when deciding whether to opt for a Unitary Patent or deciding how to make use of the UPC. Nevertheless, we hope that this guide provides an accessible overview of the most important points which you should consider.

If you require information allowing you to make decisions suited to your own particular circumstances, please contact Dehns for more detailed advice and guidance.

Contact Dehns +44 20 7632 7200 [email protected] www.dehns.com 2

Part I: The Unitary Patent

What is it? Unitary Patents will protect inventions in multiple countries at once. This is different from the existing system, where patents are granted on a country-by-country basis. 3

What’s changing? Which countries are At present, patent protection across Europe can taking part? be obtained by filing a patent application with the The Unitary Patent was originally intended to European Patent Office (EPO). The EPO examines provide a single patent covering the whole EU, the patent application and, once the application similar to the existing systems for single EU trade is considered to be allowable, grants a “European mark and design registrations. However, to begin Patent”. Despite its name, the European Patent with, the system will come into force without the has to be “validated” separately in each individual participation of all EU countries. European country where patent protection is needed. The current procedure therefore gives rise The legislation establishing the Unitary Patent to a “bundle” of separate national patent rights, system comprises three major parts, referred to as one patent per country, which each take on their the “Unitary Patent Package”. The Unitary Patent own independent existence after validation. These will only be available in countries which sign up to all are sometimes referred to as “bundle patents” or three parts of the Package. “classical European Patents”.

As of March 2016, 25 of the 28 EU countries have In contrast to classical European Patents, the Unitary signed up to the complete Unitary Patent Package. Patent will be a single patent which will provide Spain and Poland have remained outside the system protection in multiple countries simultaneously. This for political reasons. Croatia was not an EU member will operate in parallel with the existing EPO system, at the time that the legislation was agreed. However, so for some countries patent applicants will have all three of these countries have the option of joining a choice of opting for a Unitary Patent or instead at a later date. following the classical route. Independent national patent systems will also continue to operate. This means that a Unitary Patent will potentially cover the whole EU apart from Spain, Poland and Croatia. However, at first the scope of the new system is likely to be more limited than this, with more countries joining over time – see below for details. 4

When will the Unitary Figure 1: EU/EPO membership and patent availability Patent be available? Key Although 25 EU countries have signed up to the EU and EPO members: complete Unitary Patent Package, one part of the UP or EP available* Package still needs to be officially approved (ratified) by national parliaments. This is the Unified Patent EU and EPO members: EP available, but not UP Court Agreement, which establishes the new Court. The new system will only come into effect when the Non-EU members which are EPO parliaments of 13 EU countries have ratified this part members: EP available, but not UP of the Package. Those 13 countries must include the Non-EU, non-EPO members: UK, France and Germany. EP available via special agreement, but not UP Non-EU, non-EPO members: As of March 2016, nine countries (including France) neither EP nor UP available have ratified the UPC Agreement and so the UK, Germany and two other countries must still ratify UP: Unitary Patent the UPC Agreement. It is expected that either the EP: classical European Patent UK or Germany will delay final ratification until all * assuming all countries shown ratify UPC Agreement the formal preparations have been completed and until at least 12 of the 13 necessary countries have ratified the UPC Agreement, so that the system will be fully ready for operation as soon as British or German ratification happens. The 13 country milestone will probably be reached in late 2016, which will lead to the new system entering into force in early 2017.

The Unitary Patent will at first only be available in countries which have ratified the UPC Agreement. Depending on how many countries ratify the UPC Agreement before the UK and Germany, this means that the Unitary Patent may at first cover only 13 EU countries. More countries are expected to ratify the UPC Agreement over time. This means that Unitary Patents granted in the early years of the system are likely to have a different territorial scope to Unitary Patents granted in later years. 5 6

How can I obtain a participating in the Unitary Patent system, patent applicants will face a choice of converting their Unitary Patent? granted European Patent into a Unitary Patent, or Unitary Patents will be granted by the EPO. The instead validating their European Patent in separate application, search and examination procedures will countries in line with the classical procedure. be identical to the existing system. No additional application fees or formalities will be required The decision on whether to opt for a Unitary Patent during the filing or examination process and no or protection via the classical route only needs to be final decision needs to be taken on whether or not taken when the EPO publishes a “mention of grant” a Unitary Patent is desired until the EPO grants the in the European Patent Bulletin, which happens at European Patent. the end of the EPO’s application and examination procedure. The Unitary Patent system will run in parallel to the classical system as an alternative, rather than If a Unitary Patent is desired, a “request for Unitary replacing it altogether. For countries which are Effect” must be filed at the EPO withinone month of the publication of the mention of grant. At the same time, a translation of the whole patent must be provided (see below for details).

Figure 2: Grant procedures for Classical and Unitary Patents 1 month

Request Unitary Eect Single patent NEW File translation of whole patent covering multiple

CURRENT into another language countries

3 months File patent EPO searches and Notification of File translations of claims Grant of patent application at EPO examines application intention to grant into French and German*

National validation Individual patents, *assuming application filed in English formalities one per country 7

If a Unitary Patent is not desired, the one month deadline can be ignored and the patent can be brought into force (“validated”) in separate countries The Unitary Patent system will run using the classical procedure instead. Most countries in parallel to the existing system, have a three month validation deadline, starting rather than replacing it altogether from the publication of the mention of grant. In some countries the patent will enter into force automatically. Other countries may require validation formalities such as the filing of further translations, the payment of fees and/or the appointment of a local attorney.

If the one month deadline is missed, no extension is available and so a Unitary Patent cannot be granted, but the European Patent can still be validated in individual countries using the classical procedure.

1 month

Request Unitary Eect Single patent NEW File translation of whole patent covering multiple

CURRENT into another language countries

3 months File patent EPO searches and Notification of File translations of claims Grant of patent application at EPO examines application intention to grant into French and German*

National validation Individual patents, formalities one per country 8

What about non-EU countries? After claims translations have been filed in response to the “Notification of Intention to Grant”, and European Patents granted by the EPO can be subject to certain other formalities, the EPO validated in a number of non-EU countries such publishes the “mention of grant” which sets the as Switzerland, Norway, Iceland and Turkey. Some deadlines for requesting Unitary Effect and/or other countries which are not formally EU or EPO beginning national validations. It is at this point members, such as Bosnia and Morocco, also have that the language requirements for the classical agreements in place which allow patents to be procedure and the Unitary Patent procedure diverge. obtained via the EPO route. These countries will not be covered by a Unitary Patent and so the classical Validation of a granted European Patent under procedure will need to be followed to obtain patent the classical procedure can give rise to a complex protection there via the EPO. patchwork of additional translation requirements depending on which countries are chosen (see the EU member states which are not taking part in Appendix, which summarises these requirements). the Unitary Patent system (i.e. Spain, Poland and A number of EPO countries are signatories to the Croatia), and any EU countries which have not London Agreement, which aims to simplify the ratified the UPC Agreement at the time that the translation requirements for classical validations. system enters into force, will also be available only However, this has been implemented to a different via the classical procedure. extent in different countries, which means that some countries require no additional translations, some The map at pages 4-5 shows the options available require a translation of the claims into their own across Europe. These are also summarised in official language, some require a translation of the the Appendix. description into English if the patent was granted in French or German, and some require a translation What languages will the of the full patent specification into their own official language. If classical European patent protection is Unitary Patent system use? chosen in any country instead of a Unitary Patent, The three official languages of the EPO are English, these requirements will continue to be applicable. French and German. A patent application may be filed at the EPO in any language, but it will need to The additional translation requirements for a be translated into one of the three official languages Unitary Patent will be simpler. At the same time as shortly after filing. When the EPO is ready to grant requesting “Unitary Effect”, i.e. withinone month of the European Patent, it will issue a “Notification of the publication of the mention of grant, a translation Intention to Grant”, which sets a four-month deadline of the whole patent will need to be filed. If the for filing translations of the claims into the other two patent has been examined and granted in French or official languages. These language requirements will German, the translation must be into English. If the remain unchanged under the Unitary Patent system. 9

patent has been examined and granted in English, How much will a Unitary the translation can be into any official language of any EU member state. No further translations will Patent cost to maintain? be needed for any of the countries covered by the Just as under the existing system, renewal Unitary Patent, even though some of those countries (maintenance) fees will be payable to the EPO on an require extra translations if the classical procedure is annual basis while a patent application is pending. followed instead. These start with the renewal fee for the third year, which is payable at the second anniversary of the Eventually the need for additional translations under filing date. the Unitary Patent system will be phased out in favour of machine translations. This is planned to take place Under the classical system, renewal fees after the after a transitional period of six to 12 years. European Patent has been granted are payable to the national patent offices of the countries where Under the classical procedure, translation fees can the European Patent has been validated. This will be a significant cost burden, depending on which continue to be the case for any European Patents countries are chosen for patent protection. The validated using the classical route, even after the Unitary Patent therefore potentially offers significant Unitary Patent system comes into effect. cost savings in this respect. Compensation for translation costs will also be available for EU-based Unitary Patents will also incur annual renewal fees, SMEs, non-profit organisations, universities and but these will continue to be payable directly to the public research organisations. EPO after grant instead of being payable to national patent offices. The schedule of fees will follow the Patent owners who normally validate their European so-called “True Top 4” model, in which the renewal Patents under the classical procedure only in fees payable will be similar to the current cost of countries requiring limited translations or no maintaining classical European Patents in the UK, translations at all beyond the compulsory translation France, Germany and the Netherlands (the four of the claims into English, French and German should most-frequently-chosen EU countries for patent bear in mind that the Unitary Patent will actually validation, which are also four of the EU’s largest incur increased translation fees due to the need to economies by nominal GDP). provide a translation where none is necessary under the “classical” system. This increased cost should Table 1 provides a summary of Unitary Patent be weighed against any predicted benefit which may renewal fees together with estimates of the combined arise from having patent protection in a wider range renewal fees for a European Patent which is instead of countries. brought into force as a classical European Patent in various combinations of major EU countries. The current EPO renewal fees (payable while the patent application remains pending) are also shown. 10

A European Patent Application will typically remain countries where patent protection is required, which pending at the EPO for at least four to five years countries are desirable, and how long the patent is from filing to grant. In an illustrative situation where maintained in any given country. Table 1 allows you the patent grants between the fourth and fifth to calculate and compare cost estimates for some anniversaries of the filing date, validating the patent scenarios, but for detailed advice on any particular as a Unitary Patent and maintaining it for its full 20- situation please contact us. year term would incur a total renewal cost of €36,325 over its lifetime. This represents an increase in cost of Renewal fees will continue to be payable separately about €8,000 compared to bringing the same patent for countries where the classical route is used; so, into force in only the UK, France and Germany and for example, if you opt for a Unitary Patent but also maintaining it for the same duration. On the other want to obtain protection for your invention in Spain, hand, the Unitary Patent would save about €12,000 you will need to validate the European Patent via the over its lifetime compared to maintaining classical classical route in Spain and pay Spanish renewal European Patents for 20 years in the UK, Germany, fees on an annual basis on top of the Unitary Patent renewal fees. France, the Netherlands and Italy, and would save nearly €20,000 if Sweden were also added to the A downside of opting for Unitary Effect will be the classical validations. Small additional cost savings may loss of flexibility in the years after grant. Under the be produced if the patent can be “fast-tracked” to classical system, validated European Patents can be grant prior to the third or fourth year. abandoned on a country-by-country basis at different times after grant. Some patent owners take advantage A Unitary Patent may be an attractive option of this system by validating their patent in a large financially for anyone who desires patent protection number of countries at first and then shrinking their in four or more countries, particularly if maintaining portfolio in later years as their business develops, patent protection for a long term is desirable. to focus patent protection on their core markets or If protection in only a handful of countries (for countries which are particularly important for strategic example, the UK, Germany and France) is required, a reasons. This may reduce the overall renewal fees Unitary Patent may still be comparable to or cheaper payable over time. A Unitary Patent will not offer this than maintaining classical patents in those countries flexibility: as the Unitary Patent is a single intellectual for up to about 10 years. During the second half of property right, it will lapse in all countries together the patent term the Unitary Patent becomes more if a renewal fee is not paid. The scope of the Unitary expensive than maintaining classical patents in only Patent cannot be trimmed over time to reduce renewal a few countries, and this cost difference increases fees. In the long run, a Unitary Patent may therefore significantly year-on-year. turn out to be more expensive.

The overall costs of a Unitary Patent compared to a Any cost implications for the Unitary Patent will bundle of classical European Patents will therefore therefore need to be assessed on a case-by-case depend on a number of factors including the time basis. Dehns can advise you on the implications for taken for the EPO to grant the patent, the number of your own business. 11

Table 1: Renewal fee comparisons

Classical Classical Classical Classical EP: EP: EP: Application Unitary EP: GB, DE, GB, DE, GB, DE, FR, pending Years Patent GB, DE, FR FR, NL FR, NL, IT NL, IT, SE at EPO from Fees per Fees per Fees per Fees per Fees per Fees per filing year (€) year (€) year (€) year (€) year (€) year (€) 2 35 95 95 95 195 0

3 105 215 215 215 330 470

4 145 215 305 305 470 585

5 315 320 475 595 795 820

6 475 430 650 800 1040 1050

7 630 530 810 990 1255 1165

8 815 665 1005 1240 1550 1280

9 990 790 1195 1460 1800 1395

10 1175 920 1390 1690 2065 1575

11 1460 1115 1690 2070 2485 1575

12 1775 1340 2020 2510 2960 1575

13 2105 1590 2380 2995 3490 1575

14 2455 1860 2750 3440 3970 1575

15 2830 2145 3140 3885 4450 1575

16 3240 2465 3570 4310 4915 1575

17 3640 2780 3990 4735 5375 1575

18 4055 3110 4425 5170 5855 1575

19 4455 3435 4860 5605 6320 1575

20 4855 3750 5280 6025 6780 1575

Note 1: all fees are based on current fee schedules and exchange rates as of March 2016 and exclude VAT and Dehns service charges. Conversions into € are rounded to the nearest €5. Figures are provided for guidance only. For more detailed advice on any particular situation please contact Dehns. Note 2: Spain (ES) is the EU’s 5th-largest economy by nominal GDP, but is not participating in the Unitary Patent and so cost estimates have been based on the remaining top 6 EU economies. Note 3: Unitary Patent or national renewal fees are payable only after grant. While the application is pending, EPO renewal fees are payable instead. 12

Will post-grant Opposition, If you wish to file a challenge against the validity of a European Patent after the nine-month Opposition Limitation and Revocation window has closed, at the moment it is necessary to at the EPO be available do this through the national courts of the countries where the patent has been validated. Unitary Patents for a Unitary Patent? will instead need to be challenged in the Unified Once a European Patent has been granted, third Patent Court. This potentially makes Unitary Patents parties have a nine-month period in which they can more vulnerable to challenges, since a successful file an Opposition at the EPO to seek revocation of challenge at the UPC will invalidate a Unitary Patent the patent. Decisions arising from EPO Oppositions across Europe. For patent owners, this means that can also be appealed to the EPO’s Boards of Appeal. the danger of “one-shot” centralised revocation still If a patent is revoked or amended after a final persists even if the patent survives EPO Opposition decision in Opposition or Appeal proceedings, this proceedings. For more details, see Part II of this takes effect in all countries where the European Guide or contact Dehns for advice specific to your Patent has been validated under the classical system. own circumstances.

Decisions of the EPO’s Opposition Division and If you are a third party concerned about the Boards of Appeal will also affect Unitary Patents. The possibility of an infringement lawsuit, you should EPO Opposition procedure can therefore be used to bear in mind that a Unitary Patent could allow the seek revocation of a Unitary Patent just as with any patent owner to obtain a single judgment against European Patent which has been validated by the you which is enforceable in multiple countries rather classical route. than needing to pursue you in separate countries. As a strategic measure, you may therefore wish to Patent owners can also apply to the EPO at any consider pre-emptively filing Oppositions at the EPO time after grant to have their own patents revoked more commonly than you do at present. You may or to have the scope of the patent limited. Any also wish to consider pre-emptively filing revocation such revocation or limitation takes effect in all EPO actions at the UPC instead of, or in parallel to, EPO states. These procedures will also be available for Oppositions. Although they will be more expensive Unitary Patents. than EPO Oppositions, UPC revocation actions should result in faster decisions on average (with a target of 12-15 months between filing an action in the UPC and receiving a written decision). 13

Will Unitary Patents affect How does this affect Freedom to Operate? Supplementary Protection Yes. The existence of Unitary Patents is likely to Certificates? change the Freedom to Operate (FTO) landscape Applications for Supplementary Protection significantly. Patent proprietors will have potentially Certificates (SPCs) for medicinal products and plant lower-cost access to patent protection across a protection products require a “basic patent” to be wider range of countries than before. If you are specified. It will be permissible to indicate a Unitary carrying out potentially-infringing acts in a country Patent as the “basic patent”. There are proposals where your competitor does not normally bother under discussion for a “unitary SPC”, but these to validate their classical European Patents, you discussions are at an early stage and it is likely to should bear in mind that this state of affairs could be some time before such unitary SPCs become change under the Unitary Patent system. FTO available. Therefore, under current plans, SPCs will searches are always strongly advisable before be available only on a country-by-country basis in bringing a product to market or entering a new line with the existing system, even if a Unitary Patent market and the advent of the UPC could make this is relied upon as the “basic patent”. even more critical for your business.

Please contact Dehns if you need more information If a Unitary Patent poses a potential FTO obstacle, regarding SPCs. you can seek to invalidate the patent through EPO Opposition and/or UPC revocation actions, as described above. The UPC will also have the power to issue declarations of non-infringement which will be valid throughout the participating countries. Successfully obtaining a revocation decision or a declaration of non-infringement from the UPC should help to clear the way to carry out business across Europe. As with other types of decision at the UPC, a declaration of non-infringement should be obtainable within 12-15 months from commencement of Unitary Patents are likely to proceedings and should be quicker and cheaper than change the Freedom to Operate seeking separate judgments in national courts. landscape significantly 14

Is a Unitary Patent suitable for Any decision on whether to opt for Unitary Patent protection in participating countries, or whether the needs of my business? to use the established classical route instead, will Unitary Patents will offer a number of advantages and need to take into account your own business needs, new opportunities for patent proprietors compared to budgetary constraints, and appetite for risk, bearing the classical European Patent system, but there will in mind the potential strengths and weaknesses also be a number of potential disadvantages. Some which a Unitary Patent might offer compared to the of the most significant pros and cons of the Unitary classical system. Patent are identified in Table 2. Other advantages and disadvantages may exist in any individual set of There is no “one size fits all” answer and in some circumstances, with the overall balance depending cases the decision could be finely balanced. For on the facts of any particular case. detailed advice relating to your own particular circumstances, please contact any of the team here at Dehns, who will be able to support your decision making process.

There is no “one-size fits all answer”

For detailed advice relating to your own particular circumstances, please contact any of the team here at Dehns, who will be able to support your decision making process 15

Table 2: Some potential pros and cons of the Unitary Patent system

Potential advantages Potential disadvantages

Protection in multiple countries with a single patent Some large economies (e.g. Spain, Norway, Switzerland) are not covered

Reduced renewal fees for protection across Europe Potentially more expensive to maintain if only 2 or 3 countries required; loss of flexibility in reducing renewal fees over the lifetime of the patent

Fewer translations may be needed …but in others the Unitary Patent could in some situations... lead to increased translation costs

Enforcement of patent rights in multiple Vulnerable to “one shot” revocation at countries through a single court procedure the UPC, even if the patent survives EPO Opposition proceedings

Contact Dehns +44 20 7632 7200 [email protected] www.dehns.com 16

Part II : The Unified Patent Court

What is it? The Unified Patent Court (UPC) is a new supranational court. It will have the exclusive right to issue judgments in lawsuits involving Unitary Patents, for example with regard to questions of infringement or validity. It will also be able to issue judgments relating to classical European Patents unless these are “opted out” of the UPC. The UPC will also be able to issue judgments relating to SPCs granted on the basis of a Unitary Patent. Its judgments will be enforceable throughout all of the countries which have signed the Unified Patent Court Agreement. 17

What’s changing? EPO Opposition window has closed. The UPC will also have the power to issue declarations of non- Under the classical system, any attempt to assert a infringement with legal effect across Europe. European Patent against an infringer must be made in the national court of at least one country. The Litigation at the UPC should be a lower-cost option countries whose courts must be used depend on than carrying out litigation in separate national where any infringement is taking place and/or where courts. It should also be faster than many national the infringer is located. Anyone wishing to challenge systems, with a target of issuing judgments within 12 the validity of a classical European Patent must also to 15 months from the start of proceedings. do so on a country-by-country basis through the national courts unless the EPO’s nine-month post- The Unitary Patent system should therefore make grant Opposition window is still open. Anyone seeking it easier, quicker and cheaper for a patent owner to a declaration of non-infringement of a European take action against an infringer on a pan-European Patent must also do so at the national level. basis. For third parties, the availability of a pan- European declaration of non-infringement or Litigation at the national level can be costly and revocation decision within a short timescale and at time-consuming, often requiring separate lawsuits a potentially lower cost may also be an attractive in multiple countries. In addition, the outcome of feature of the UPC. a lawsuit can vary from one country to another, with some national courts upholding the patent The UPC’s jurisdiction will not be limited to Unitary and others revoking it, some courts finding it to be Patents. It will also have the power to issue judgments infringed and others finding it not infringed. in cases concerning the infringement or validity of classical European Patents. The UPC will therefore Under the new system, the Unified Patent represent a significant change in the post-grant Court (UPC) will be able to rule on questions of litigation landscape for European Patents, whether infringement concerning Unitary Patents, with the they are granted with Unitary Effect or not. However, power to issue orders which are enforceable against during a transitional period, it will be possible to infringers throughout the territory covered by the opt classical European Patents out of the UPC’s Unitary Patent. The UPC will also be able to hear jurisdiction, meaning that any lawsuits concerning challenges to the validity of a Unitary Patent at any opted-out patents will remain the responsibility of point after grant, allowing a successful challenger national courts. The opt-out procedure is discussed in to invalidate the patent across Europe even if the more detail later in this Guide. 18

Where will the UPC be located? and Regional Divisions). The different parts of the Court of First Instance will normally have different The Unified Patent Court will consist of three basic competencies depending on the type of case, the parts: technical subject matter of the patent, and/or the countries where parties to proceedings are based or • The Court of First Instance, which will have where certain acts took place. sections across Europe; • The Court of Appeal, which will hear appeals from Any country participating in the Unitary Patent decisions of the Court of First Instance and which system can establish its own Local Division of the will be based in Luxembourg; Court of First Instance, or can group together with • The Registry, which will have a central office other countries to establish a Regional Division. at the Court of Appeal in Luxembourg and sub- Most major EU countries are likely to host at least Registries with different divisions of the Court. one Local Division. The UK is likely to host a Local The Registry will perform administrative Division in London and possibly an additional Local functions, including processing opt-out requests. Division in Scotland. Germany plans to host four Local Divisions (Düsseldorf, Hamburg, Mannheim Any new action at the UPC will need to be brought and Munich). So far only one Regional Division has before the Court of First Instance. The Court of been confirmed, which will be based in Stockholm First Instance will itself consist of multiple divisions and which will be responsible for Sweden and the (a Central Division and multiple Local Divisions Baltic states of Latvia, Lithuania and Estonia.

Figure 3: UPC structure

COURT OF APPEAL (Luxembourg) CJEU

Requests for Appeals preliminary rulings on interpretation of EU law

Court of First Instance

LOCAL DIVISIONS REGIONAL DIVISIONS CENTRAL DIVISION

London Paris Munich 19

The Central Division will have its seat in Paris, with a specialist section in London dealing with chemistry (including pharmaceuticals), metallurgy and “human necessities” (patents in International Patent Classification (IPC) classes A and C) and a specialist section in Munich dealing with mechanical engineering, lighting, heating, weapons and blasting (patents in IPC class F). The Paris section of the Central Division will deal with any Central Division cases which are not the responsibility of London or Munich, namely any Central Division cases relating to patents in IPC classes B, D, E, G or H, including physics and electricity.

In addition, the UPC Agreement establishes a judicial training centre in Budapest, and a mediation and arbitration centre with locations in Lisbon and Ljubljana. At any point during proceedings, the Court can recommend that the parties take their dispute to mediation or arbitration.

Figure 4: Key UPC locations

Key Central Division (London)

Central Division (Paris)

Central Division (Munich)

Court of Appeal (Luxembourg)

Judicial Training Centre (Budapest) Arbitration/Mediation Centre (Lisbon and Ljubljana) 20

Which part of the UPC will The Central Division will also be available as an option in infringement actions where the alleged infringer be responsible for my case? does not have a residence or place of business in a The competencies of the various divisions of the UPC country, even if there is also a Local or Regional Court of First Instance will overlap in a complex Division competent to hear the case. manner depending on the type of case as well as the locations where certain acts took place or where the Certain types of action can also be transferred defendant is located. from the Local or Regional Divisions to the Central Division. For example, if an infringement action is The following is therefore necessarily a simplification. commenced in a Local or Regional Division and For more detailed guidance and advice relating to the infringer files a counterclaim for revocation in any particular situation, please contact the Dehns defence, the Local or Regional Division will have the team of qualified patent attorneys and litigators. option of referring the counterclaim to the Central Division while the infringement action continues The Local Divisions and Regional Divisions will be the in the Local or Regional Division. This is known as default forum for actions relating to infringement. “bifurcation” (see Figure 5) and is discussed in more The relevant Local or Regional Division will depend detail below. Alternatively, the Local or Regional on the country where the infringement took place Division can hear both parts of the case, or transfer or where the infringer has a residence or place of both parts to the Central Division if the parties agree. business. In cases where infringing acts took place in more than one country, and/or where the infringer is Regardless of all the above, parties to a dispute can located in yet another country, there will therefore be alternatively agree to bring any type of dispute before a choice of forums. the Central Division.

Some smaller countries are unlikely to establish their The Court of Appeal will hear appeals from any own Local or Regional Divisions, so in these cases the section of the Court of First Instance. Central Division will be the default forum for actions relating to infringements in those countries. The normal responsibilities of the different sections of the UPC are summarised in Table 3, together with details of the language of proceedings in each section. 21

Figure 5: Bifurcation

LOCAL DIVISION CENTRAL DIVISION Decides on infringement Decides on revocation

Sues for infringement

CLAIMANT DEFENDANT

Revocation Counterclaim

What language will The language of proceedings in any Appeal will be the language used before the Court of First Instance, need to be used? or the language of the patent if all parties agree. In the Local Divisions, the language of proceedings may be the official language of the relevant country These possibilities are summarised in Table 3 on hosting the Division. In the case of a Regional pages 22-23. Division, the participating countries may nominate one of their languages or several as co-official The majority of European Patents granted by the languages of the Division. However, both Local and EPO are in English or German and it is also expected Regional Divisions may also allow English, French or that most Local or Regional Divisions of the Court German to be used as an additional official language. will allow English to be used as an alternative official language in proceedings. Therefore, it seems likely The language of proceedings before the Central that English will be widely available as an official Division will be the language in which the patent was language in most proceedings before the UPC. granted and, if the parties and the Court agree, this may also be used in the Local or Regional Divisions. Where the language of proceedings is unfamiliar to a party, simultaneous interpretation is permitted at the oral hearing and may be provided by the Court in some circumstances, or otherwise at the party’s own expense. 22

Table 3: Normal competencies of the sections of the UPC

Section of Language of Type of Action the Court Location proceedings

Actions for actual or Local or Regional The country where the An official language of the threatened infringement, Division* actual or threatened host country, or English, and related defences infringement has German or French if occurred or may permitted by the Division occur, or the country where the defendant has its residence or a place of business

Actions for declarations Central Division Paris, London or Munich, The language in which of non-infringement depending on technical the patent was granted subject matter

Actions for provisional Local or Regional The country where the An official language of the and protective measures Division* actual or threatened host country, or English, and injunctions infringement has German or French if occurred or may permitted by the Division occur, or the country where the defendant has its residence or a place of business

Actions for revocation Central Division Paris, London or Munich, The language in which depending on technical the patent was granted subject matter

Counterclaims Local or Regional The same Local or An official language of the for revocation Division* Regional Division host country, or English, hearing the action German or French if for infringement permitted by the Division

The Local or Regional Division may refer the counterclaim, or the whole case, to the Central Division

Actions marked * may be brought before the Central Division if the defendant does not have a residence or place of business in a country participating in the UPC, or if the relevant country does not host a Local Division or participate in a Regional Division. 23

Actions for damages Local or Regional The country where the An official language of the or compensation Division* actual or threatened host country, or English, derived from provisional infringement has German or French if protection conferred by occurred or may permitted by the Division a published European occur, or the country Patent Application where the defendant has its residence or a place of business

Actions relating to the use Local or Regional The country where the An official language of the of the invention prior to Division* actual or threatened host country, or English, the granting of the patent infringement has German or French if or to the right based on occurred or may permitted by the Division prior use of the invention occur, or the country where the defendant has its residence or a place of business

Actions for compensation Local or Regional The country where An official language of the for licenses of right Division* the defendant has host country, or English, its residence or a German or French if place of business permitted by the Division

Actions concerning Central Division Paris, London or Munich, The language in which decisions of the depending on technical the patent was granted EPO in relation to subject matter administrative tasks (e.g. processing of requests for Unitary Effect)

Appeals against Court of Appeal Luxembourg The language of decisions of the Court proceedings before the of First Instance Court of First Instance, or the language in which the patent was granted 24

What is bifurcation? Bifurcation may also lead to an increase in litigation costs due to the need to fight two lawsuits in Defendants in infringement proceedings commonly parallel, potentially in different countries, in different file a counterclaim for revocation (i.e. seeking a languages, and using different legal teams. ruling that the patent is invalid). While bifurcation is permitted in proceedings before If infringement proceedings are in progress before the UPC, it should be noted that its use is subject a Local or Regional Division of the UPC, and the to the discretion of the Local/Regional Divisions. defendant files a counterclaim for revocation in Judges at the UPC also have the power to decide on defence, this must be brought before the same both parts of the case together and it is likely that, in Division which is hearing the action for infringement. many cases, they will do so rather than bifurcating However, that Division will then have the option, the proceedings. Where bifurcation is employed, the if it chooses, of referring the revocation action to Rules of Procedure allow the Local/Regional Divisions the Central Division while the infringement action discretion to stay any infringement proceedings continues in the Local or Regional Division. This (i.e. to put the infringement trial on hold) until is known as bifurcation and is a model commonly a counterclaim for invalidity has been decided encountered in the national legal systems of some upon, and specifically oblige such a stay where European countries, notably in Germany. there is a “high likelihood” of a finding of invalidity. If a stay has not been granted, the Rules oblige If bifurcation is employed, there is a possibility the Central Division to accelerate the revocation that a decision will be reached in the infringement proceedings with the aim of holding the oral hearing action before a decision is reached in the revocation for the revocation action before the hearing for the action. It is therefore possible that a patent will be infringement action takes place. In practice this found to be infringed, only later for the same patent should act to reduce the impact of bifurcation in to be found invalid (in which case no infringement many cases. actually happened, because the patent was never valid). Bifurcation may therefore be a cause of It is possible that, particularly in the early years of concern for some parties due to the potentially the Unitary Patent system, different Local/Regional severe adverse consequences for the alleged Divisions of the UPC will tend to exercise their infringer in such situations. discretion differently when deciding whether or not to bifurcate infringement and validity proceedings, or when deciding whether to stay any part of those proceedings following bifurcation. Over time it is likely that the practice of different Local and Regional Cases before the UPC will be heard Divisions will converge. by a multinational panel of judges 25

Who will judge cases Will the CJEU have a role? at the UPC? As a Court common to member states of the EU, the UPC must act in accordance with EU law. This Cases before the Court of First Instance will means that the UPC may request preliminary rulings normally be heard by a multinational panel of at from the Court of Justice of the EU (CJEU) in order to least three judges. ensure uniform application of the law.

In the Local and Regional Divisions, cases will During preparation of the new system, there was normally be heard by a panel of three legally- concern that this would open the way for referrals to qualified judges, with at least one being from the the CJEU on questions of substantive patent law (for country which hosts the relevant Local Division example, novelty and inventive step), potentially casting (or from one of the countries participating in the doubt on established case law in such areas. The CJEU Regional Division) and the remaining judge or judges is not a specialist Intellectual Property court and its being drawn from a multinational pool. In the Central judgments in other areas of IP law (such as SPCs, trade Division the panel will normally consist of two legally- marks and copyright) over the years have sometimes qualified judges from different countries and one been heavily criticised as being unclear or showing judge having an appropriate technical qualification in an incomplete understanding of the relevant issues. a relevant discipline.

The final texts of the legislation forming the Unitary Any of these panels may be enlarged with a further Patent Package appear to minimise the risk of the technically-qualified judge at the request of the CJEU re-opening questions of established patent parties. Alternatively, the parties may agree to have law. However, it cannot yet be completely ruled out their case heard by a single legally-qualified judge. that this could still happen, since the CJEU will have ultimate responsibility for interpretation of these texts. In the Court of Appeal, the panel will normally consist of three legally-qualified judges from different countries and two technically-qualified judges drawn from the pool.

In common with patent cases in the British courts, but unlike the US, jury trials will not form part of the UPC system. 26 Figure 6:UPCprocedure 12-15 MONTHS • • • • • • • • • Schedule establishedforfurthersubmissionsanddatesetoralhearing Interim conference(maybeheldbyphoneorvideoconferencing) Judge −Rapporteurreviewsdocuments (Optional) furtherroundsofcorrespondenc Defendant fileswrittendefence Claimant commencesproceedingsbyfilingwrittensubmissions Written decisionissuedafterhearing(within6weeks) One dayonlyinmostcases Pa rties presenttheircasestofullpanelofjudges Or In Wr terim pr al pr it ten pr oc edur oc oc edur edur e e e e 27

How will the UPC to clarify the positions of the parties, as well as to establish a schedule for further proceedings, to set procedure work? a date for an oral hearing and to decide the value of Actions at the UPC will have three parts: the dispute. However, the Rapporteur also has wide- ranging powers to order the parties to take certain i. a written procedure; actions, for example to produce further evidence or experimental reports or to appoint expert witnesses. ii. an interim procedure; iii. an oral hearing. Following the conclusion of the written procedure and any interim proceedings, an oral hearing will be Actions at the UPC will be commenced by the appointed. This will take place before a panel of judges plaintiff lodging a Statement or Application (the and will involve hearing the parties’ submissions terminology differs depending on the type of action) together with any witnesses or experts who may in writing with the relevant Division of the Court of have been appointed during the interim procedure. First Instance, or with the Registry in the case of an The judges may direct questions to the parties, their Appeal. This can be done electronically, or in hard representatives, and any witnesses or experts. copy followed by an electronic copy. Most of the procedure at the UPC will therefore be The defendant will then need to reply with a written carried out in writing, with similarities to Opposition statement of defence, following which a further and Appeal procedures before the EPO. round of written submissions may optionally be made by the plaintiff with an opportunity for the defendant Overall, proceedings before the UPC should to reply once more. take about 12 to 15 months from start to finish. The periods allowed for reply during the written The written submissions will be reviewed by the procedure are short (typically 1 to 3 months) and Court, which will appoint one of the judges as a the oral hearings will normally be scheduled to last Rapporteur. The Rapporteur can order the parties to only one day. UPC proceedings should therefore be clarify specific points, answer questions, or produce significantly faster than proceedings in many national evidence or other documents. The Rapporteur can courts, providing faster justice and potential savings also order an interim conference to be held, primarily in litigation costs. to establish the main facts and issues in dispute and 28

What interim measures Some of these measures are more common in certain national courts than others at present. For example, can the UPC grant? the saisie is a common feature in infringement The UPC will have the power to grant a range of proceedings in the French courts but its counterpart interim measures prior to a full trial, including: under English law is rarely employed. Provisional measures under the UPC therefore potentially offer • Ordering a party to produce evidence; new opportunities for patent owners to take tougher pre trial actions against infringers than are currently • Ordering measures to be taken to preserve available in some countries. evidence of an alleged infringement, including staging raids on an alleged infringer’s premises to As a defence against such measures, any party can seize evidence such as documents or goods. This file a “Protective Letter” with the Court. Protective is known as a saisie contrefaçon; Letters are an aspect of UPC procedure which has • Granting “freezing orders”, preventing an alleged been adopted from the German legal system. Such infringer from relocating assets to a country letters may be helpful where a party considers that outside the UPC’s jurisdiction; there is a risk that they will be sued for infringement, • Granting preliminary injunctions against alleged and in particular where there is a risk that the infringers to prevent an imminent or repeated claimant will seek an interim order such as a saisie. infringement; A Protective Letter allows a party to pre-emptively • Ordering the seizure or delivery-up of infringing set out the reasons why an application for such goods; and measures should be refused, for example by setting • Ordering the seizure of assets or blocking of out the reasons why a particular patent is not bank accounts of an alleged infringer where infringed or why the patent is invalid. Such a letter “circumstances likely to endanger the recovery of will “expire” after six months but can be renewed on damages” can be demonstrated. a rolling six-monthly basis upon payment of fees.

In exceptional cases, where a delay would cause Please ask a Dehns attorney if you would like to know “irreparable harm” to the patent proprietor or where more about interim measures and the opportunities there is a demonstrable risk of evidence being or risks which they may pose for your business. destroyed, these types of measures can be granted without the defendant being heard. 29

Who can represent parties in Our attorneys can therefore represent parties in front of the Central Division in London, Munich or Paris, proceedings before the UPC? in front of the Court of Appeal in Luxembourg, or in Parties to proceedings before the UPC can be any Local or Regional Division anywhere in Europe, represented by a European Patent Attorney having regardless of the nationalities of the parties involved appropriate qualifications, which are held by the in the dispute. patent attorneys here at Dehns. The European Patent Attorney need not be a national of a country How much will this cost? participating in the Unitary Patent system. Other lawyers (such as solicitors and barristers) may also Are any costs recoverable? be employed, though with the restriction that they Court fees for actions at the UPC will be based on must be qualified to act before the national courts of a collection of fixed charges for different types of a Unitary Patent member state. action, supplemented in some cases by a “value- based” component based on the estimated value of Due to the procedural similarity of the UPC the case. SMEs will be entitled to a fee reduction of proceedings to the established EPO Opposition and 40% in many cases. Appeal procedure, European Patent Attorneys will be well placed to conduct litigation there. The UPC The fixed fees for some common types of action at also adopts features from the English Common Law the Court of First Instance will be as shown in Table tradition, which makes British patent attorneys 4. Other, typically lower, fixed fees apply for various particularly well-suited to the UPC’s hybrid Common procedural actions. These are shown in the Appendix. Law/Civil Law system. The attorneys at Dehns are dual-qualified British and European Patent Attorneys. Value-based fees will also be charged on top of Given the firm’s strong track record of success in UK the fixed fee for actions relating to a claim or litigation and contentious EPO proceedings, Dehns counterclaim for infringement, a declaration of attorneys will be especially well-equipped to act non-infringement, compensation for a license of before the UPC. right or an application to determine damages. These vary on a sliding scale depending on the value of As the UPC is a unified court common to multiple the case as determined by the Court in accordance countries, any suitably-qualified representative will with its guidelines, and range from €0 in cases worth be entitled to represent parties in front of any part €500,000 or less up to €325,000 in cases worth over of the Court. This means that Dehns attorneys will €50 million. Further details of the value-based fees be able to represent you in proceedings before any are provided in the Appendix. part of the UPC, regardless of the nationalities of the parties involved and no matter which Division of the On top of the official Court fees you will also need to Court is responsible for the case. budget for your representatives’ professional charges relating to the case. 30

The winning party in any dispute will be able to How do I “opt out” of recover costs within certain limits, depending on the value of the case. These also vary on a sliding scale UPC jurisdiction? with the cap on recoverable costs depending on the During a transitional period of at least seven years value of the case, and range from €38,000 in cases it will be possible to opt classical European Patents worth up to €250,000 to €2 million in cases worth (but not Unitary Patents) out of the jurisdiction of the over €50 million. Further details of the recoverable UPC. Any challenge to the validity of an opted-out costs are provided in the Appendix. The Court has patent after the end of the EPO Opposition period discretion to raise or lower the cost ceiling in certain will therefore need to take place in national courts. circumstances. Any attempt to assert an opted-out patent against an infringer will also need to take place in national courts. The fees at the Court of Appeal will generally be the same as or similar to the fees at the Court of First An opt-out request must be filed at the UPC Instance. Registry. There will be no court fee associated with the opt-out request and no reasons need to be given For a more detailed summary of the fee structure of for the opt-out. the UPC please contact a Dehns attorney. An opt-out in relation to a classical European Patent will also apply to any corresponding SPCs. SPCs granted on the basis of a Unitary Patent cannot be opted-out.

Table 4: Fixed fees for common actions at the UPC

Action type Fixed fee (€)

Infringement (action or counterclaim) 11,000

Declaration of non-infringement 11,000

Compensation for license of right 11,000

Application for provisional protective measures 11,000

Application to determine damages 3,000

Revocation (action) 20,000

Revocation (counterclaim) 11,000 to 20,000*

*depending on overall value of infringement claim 31

A request to opt out can be filed while the patent litigation in separate national courts, which can be application is still pending or after it has been expensive and lead to different outcomes in different granted, provided that no action before the UPC has countries (although sometimes litigating in one or already begun. two major countries, such as the UK and Germany, can be sufficient to force an infringer to reach a An opt-out for a patent can be withdrawn at any time, pan-European settlement). Opting in would allow you placing the European Patent back under the UPC’s to obtain a single outcome enforceable in multiple jurisdiction. However, once the opt-out has been countries, potentially within a shorter timescale and withdrawn, it will not be possible to opt the same at a lower cost overall. An opt-out can be withdrawn patent out again. at any time if you decide that the advantages of pan- European enforcement through the UPC outweigh During a “sunrise period” it will be possible to pre- the risks of single-shot revocation. emptively register opt-outs for granted European Patents or pending European Patent Applications You may wish to consider opting only some of your even before the new system formally comes into patents out (for example, your most valuable patents, effect. Please contact Dehns if you would like more to protect them from single-shot revocation). information about this. Separate decisions on whether to opt out can be taken for parent applications/patents and divisional Should I opt out? applications/patents. Thus, if you have a parent patent There is no single answer to this question. Any and a divisional patent relating to the same invention, decision on whether or not to opt out will need to be you could choose to opt the parent out of the UPC’s taken on a case-by-case basis having regard to your jurisdiction and leave the divisional in the UPC system, or vice versa. Subject to the appropriate time limits, own circumstances. However, the following are some you could also choose to convert the parent into a factors which you may wish to bear in mind. Unitary Patent and validate the divisional via the classical European Patent route, or vice versa. The UPC is an as-yet untested system, so in the early stages you may want to take a “wait and see” approach The UPC has the power to grant provisional remedies and opt at least some of your patent portfolio out as a such as French-style saisies (seizures of evidence precaution until the UPC becomes more established. prior to a full hearing), which are not available under national law in every country. If such remedies are If you file an opt-out you will (subject to any EPO attractive to you as a tool for dealing with infringers Opposition proceedings) avoid the risk of your you may wish to consider opting in. patent being invalidated across Europe by a single finding of invalidity. For more advice on the pros and cons of “opting out” of the UPC system, please contact any of the team On the other hand, to assert an opted-out patent in here at Dehns to help you decide whether an opt-out multiple countries you will need to pursue parallel suits your own particular needs. 32

Summary: How Dehns can support you

The arrival of the Unitary Patent and the Unified Patent Court will represent a fundamental change to the European intellectual property landscape.

Patent owners will need to take important and far- reaching decisions about how their patent application and enforcement strategies might be affected by these developments. Even businesses which do not hold patents will be significantly affected by the implications of Unitary Patents and the UPC for issues such as Freedom to Operate and litigation. 33

Although the new system is not yet in force, you For high-quality, commercially-minded advice should start preparing for its arrival now. Patent tailored to lead your business through these applicants and owners should think about whether momentous changes and to position you to take full or not to opt out. Applicants who are interested in advantage of these new systems while minimising making use of the Unitary Patent system can speak any risks they might pose for your operations, please to one of our attorneys about delaying grant until contact the Dehns team. the Unitary Patent is available. Anyone concerned about the potential impact of the Unitary Patent and UPC on issues such as Freedom to Operate can also speak to us for advice, for example on whether to monitor competitors’ patent applications or to prepare revocation actions. You should also consider whether the advent of the Unitary Patent system might affect your patent licensing strategy.

Contact Dehns +44 20 7632 7200 [email protected] www.dehns.com 34

Appendix

Table A1: EPO countries and Unitary Patent countries

Code Country Eligible for Unitary Patent system? AL Albania No AT Austria Yes BE Belgium Yes BG Bulgaria Yes CH Switzerland No CY Cyprus Yes CZ Czech Republic Yes DE Germany Yes DK Denmark Yes EE Estonia Yes ES Spain Yes, but not participating FI Finland Yes FR France Yes GB United Kingdom Yes GR Greece Yes HR Croatia Yes, but not participating HU Hungary Yes IE Ireland Yes IS Iceland No IT Italy Yes LI Liechtenstein No LT Lithuania Yes LU Luxembourg Yes LV Latvia Yes MC Monaco No MK Macedonia No MT Malta Yes NL Netherlands Yes NO Norway No PL Poland Yes, but not participating PT Portugal Yes 35

Code Country Eligible for Unitary Patent system? RO Romania Yes RS Serbia No SE Sweden Yes SI Slovenia Yes SK Slovakia Yes SM San Marino No TR Turkey No

Table A2: Translation requirements for validation using the classical route

Further translation Translation of Code Country of claims needed? description needed? AL Albania Albanian English AT Austria No German BE Belgium No French, Dutch or German BG Bulgaria Bulgarian Bulgarian CH Switzerland No No CY Cyprus Greek Greek CZ Czech Republic Czech Czech DE Germany No No DK Denmark Danish English or Danish EE Estonia Estonian Estonian ES Spain Spanish Spanish FI Finland Finnish English or Finnish FR France No No GB United Kingdom No No GR Greece Greek Greek HR Croatia Croatian English HU Hungary Hungarian English or Hungarian IE Ireland No No IS Iceland Icelandic English or Icelandic IT Italy Italian Italian LI Liechtenstein No No LT Lithuania Lithuanian No LU Luxembourg No No LV Latvia Latvian No MC Monaco No No MK Macedonia Macedonian No MT Malta No English 36

Further translation Translation of Code Country of claims needed? description needed? NL Netherlands Dutch English or Dutch NO Norway Norwegian English or Norwegian PL Poland Polish Polish PT Portugal Portuguese Portuguese RO Romania Romanian Romanian RS Serbia Serbian Serbian SE Sweden Swedish English or Swedish SI Slovenia Slovene No SK Slovakia Slovak Slovak SM San Marino Italian Italian TR Turkey Turkish Turkish

Table A3: Fixed fees at the Court of First Instance

Procedure/Action type Fixed fee (€) Infringement (action or counterclaim) 11,000 Declaration of non-infringement 11,000 Compensation for license of right 11,000 Application for provisional protective measures 11,000 Application to determine damages 3000 Revocation (action) 20,000 Same fee as the infringement action (fixed fee plus Revocation (counterclaim) value-based fee) subject to a limit of 20,000 Action against a decision of the EPO 1000 Application to preserve evidence 350 Application for an order for inspection 350 Application for an order to freeze assets 1000 Filing a protective letter 200 Application to prolong the period of a protective letter 100 kept on the Register Application to review a case management order 300 Application to set aside decision by default 1000 37

Table A4: Value-based fees for UPC Actions (Court of First Instance and Court of Appeal)

Value of case (€) Value-based fee (€) Up to and including 500k 0 Up to and including 750k 2500 Up to and including 1 million 4000 Up to and including 1.5 million 8000 Up to and including 2 million 13,000 Up to and including 3 million 20,000 Up to and including 4 million 26,000 Up to and including 5 million 32,000 Up to and including 6 million 39,000 Up to and including 7 million 46,000 Up to and including 8 million 52,000 Up to and including 9 million 58,000 Up to and including 10 million 65,000 Up to and including 15 million 75,000 Up to and including 20 million 100,000 Up to and including 25 million 125,000 Up to and including 30 million 150,000 Up to and including 50 million 250,000 Over 50 million 325,000

Table A5: Recoverable costs for UPC actions (Court of First Instance and Court of Appeal)

Value of case (€) Ceiling for recoverable costs (€) Up to and including 250k 38,000 Up to and including 500k 56,000 Up to and including 1 million 112,000 Up to and including 2 million 200,000 Up to and including 4 million 400,000 Up to and including 8 million 600,000 Up to and including 16 million 800,000 Up to and including 30 million 1.2 million Up to and including 50 million 1.5 million Over 50 million 2 million 38

Glossary of terms

Action CJEU In the context of court proceedings, such as at the The Court of Justice of the European Union. The UPC, an “action” is the pursuit of a decision (often highest court in matters of EU law. accompanied by a remedy such as an injunction or damages) from the Court. Thus an infringement Classical European Patent action relates to the pursuit of a decision against an A patent granted by the EPO can be validated in infringer, a revocation action relates to the pursuit of individual countries to provide protection there. a decision revoking a patent, and so on. Although referred to as a European Patent, this is really a “bundle” of individual national patents. Bifurcation When proceedings relating to an alleged infringement Court of Appeal of a patent and a counterclaim for revocation of the A section of the UPC which hears Appeals from same patent are treated as separate court cases, decisions of the Court of First Instance. the proceedings are said to be bifurcated. This procedure is not followed by British courts but it is a Court of First Instance common feature of German legal proceedings and is The collective name for the Central Division, Local a potential feature of the UPC. Divisions and Regional Divisions of the UPC.

Boards of Appeal EPC The department of the EPO which hears appeals The European Patent Convention. This is the law against decisions of the Opposition Division and can which governs the examination and grant of patents uphold or overturn such decisions. by the EPO.

Bundle Patent EPO Another name for the Classical European Patent. The European Patent Office. The EPO examines patent applications and grants patents for most Central Division European countries. It is not part of the EU and A section of the Court of First Instance. The default grants patents for some non-EU countries as well. forum for cases relating to countries which do not Administration of the Unitary Patent system has been have a Local Division or Regional Division. Any type delegated to the EPO even though it is not an EU of proceedings at the UPC can be brought before institution. the Central Division instead of the Local or Regional Divisions. Some types of proceedings must be European Patent brought before the Central Division instead of the A patent granted by the EPO. Once the Unitary Local or Regional Divisions. Patent system comes into force this will encompass both Unitary Patents and classical European Patents. 39

European Patent Application Opposition A patent application filed with theEPO . The An EPO procedure allowing third parties to request application is examined centrally at the EPO and revocation of a European Patent. Opposition when it is granted, validation of the patent turns it proceedings must commence within nine months of into separate national patents in different countries. the publication of Mention of Grant.

Invalidation Opposition Division See revocation. The department of the EPO responsible for assessing requests for revocation filed under the Local Division Opposition procedure. A section of the Court of First Instance dealing with certain types of case connected with the country Opt-out hosting the particular Local Division. The default A request for a classical European Patent to be forum for most types of proceedings at the UPC. exempted from the jurisdiction of the UPC.

London Agreement Rapporteur An agreement between European countries aiming A judge appointed to carry out investigations and to simplify the translation requirements for classical prepare reports during the interim portion of cases at European Patents. the UPC.

Maintenance fee Ratification An annual fee which must be paid to keep a Parliamentary approval of a treaty. The Unified European Patent Application pending or to keep a Patent Court Agreement must be ratified by 13 granted patent in force. countries before the Unitary Patent and Unified Patent Court can enter into force. Mention of Grant Official notification to the public thatEuropean a Regional Division Patent has been granted. Published online in the A section of the Court of First Instance with European Patent Bulletin. similar responsibilities to a Local Division, but with jurisdiction over cases relating to any one of a group Notification of Intention to Grant of countries. A Communication under Rule 71(3) of the European Patent Convention. It notifies the patent applicant Registry that the EPO is willing to grant a European Patent and The section of the UPC which deals with formalities encloses the patent text which it proposes to grant. including Opt-out requests. The patent applicant must approve the text, pay certain fees, and supply translations of the claims into Renewal fee the remaining EPO official languages. When this has Another name for Maintenance Fee. been done the Mention of Grant will be published. Request for Unitary Effect A request for grant of a Unitary Patent. Must be filed within one month of publication of the Mention of Grant. 40

Revocation Unitary Patent Package The act of annulling the grant of a European Patent. If The legislation establishing the Unitary Patent and a patent is deemed invalid it is revoked and is treated Unified Patent Court systems. It has three main parts: as though it never existed. • Regulation (EU) No. 1257/2012 (the “Unitary Patent Regulation”), which establishes the Saisie Unitary Patent; Formally an “order to preserve evidence”. If granted • Regulation (EU) No. 1260/2012 (the “Translation by the court, a saisie permits the inspection of a Regulation”), which governs the language suspected infringer’s premises and the seizure of requirements of the Unitary Patent system; products, materials and documentation relating • the “Agreement on a Unified Patent Court” (the to the alleged infringement, even before the full “UPC Agreement”), which establishes the new proceedings on the merits of the case have begun. court tasked with overseeing patent litigation; and SPC • Countries must sign up to all three parts of the A Supplementary Protection Certificate. These can Unitary Patent Package and ratify the UPC be granted for certain types of medicinal products Agreement in order for the system to take effect and plant protection products (e.g. herbicides) in those countries. which are subject to regulatory approval. An SPC Countries must sign up to all three parts of the temporarily extends the duration of certain rights Unitary Patent Package and ratify the UPC associated with a patent covering the product, even Agreement in order for the system to take effect in after the patent expires. those countries.

Unified Patent Court UPC See UPC. The Unified Patent Court. A supranational court created by agreement between 25 EU member Unified Patent Court Agreement states. It will have exclusive jurisdiction in lawsuits Formally the “Agreement on a Unified Patent concerning Unitary Patents, Supplementary Court”. An agreement between 25 EU states which Protection Certificates based on Unitary Patents, and establishes the Unified Patent Court. Part of the classical European Patents unless they are opted-out. Unitary Patent Package. The Unitary Patent and UPC will enter into force when ratification of the UPC Agreement Agreement by 13 countries has taken place. See Unified Patent Court Agreement.

Unitary Patent Validation Formally a “European Patent with Unitary Effect”. The act of bringing a classical European Patent A single patent which provides protection in into force in individual countries. May involve filing multiple countries at once. Granted by the EPO and a translation of at least part of the patent, and/or enforceable through the UPC. payment of a fee.

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The information in this document is necessarily of a general nature and is given by way of guidance only; specific legal advice should be sought on any particular matter. While this document has been prepared carefully to ensure that all information is correct at the time of publication, Dehns accepts no responsibility for any damage or loss suffered as a result of any inadvertent inaccuracy. Information contained herein should not, in whole or part, be published, reproduced or referred to without prior approval. Any such reproduction should be credited to Dehns. © Dehns April 2016 www.dehns.com