Report of the Litigation Committee

T. Walshe (IE), SecretaryT. Walshe (IE), Secretary

1. Meetings of the Litigation Committee:

The Litigation Committee held two virtual meetings on 27th January and 16th March 2022 respectively. The first meeting was devoted to topics relating to the UP/UPC, the second meeting in March addressed all other topics that the Litigation Committee is working on. An outline of the topics discussed at both meetings is presented below.

2. Update on UPC

On 18th January 2022, Austria deposited its instrument of ratification of the Protocol to the Agreement on a Unified Patent Court on Provisional Application (PAP-Protocol). This was the final of the thirteen Signatory States required to express their consent to by bound by the PAP-Protocol in order for the PAP-Protocol to enter into force. Consequently, the period of Provisional Application of the UPC Agreement commenced on 19th January 2022. All administrative, technical and other necessary preparations required to establish the UPC are currently underway. It is expected that the UPC system will be ready to become operational towards the end of 2022 or early in 2023.

The Litigation Committee continues to maintain the overview on ratification of the UPCA, which is publicly available on the epi website.

3. European Patent Litigation Certificate (EPLC)

The Executive Committee of the Litigation Committee were made aware of proposed amendments to the Rules on the EPLC. The proposed amendments included removal of the courses mentioned in R12 lit. a)iv to viii, namely courses based in the UK. The removal of these courses had consequences for those members of epi, in particular members of epi from Member States that are participating/are going to participate in the UPCA that successfully attended such courses with the expectation that such courses would count before the UK withdrew from the UPC Agreement. Therefore, after discussion in the epi Presidium, the Litigation Committee submitted a letter to the Preparatory Committee (now Administrative Committee) on behalf of epi in relation to this matter. We are pleased to report that as a result the Administrative Committee have ensured that any epi members that successfully completed the UK courses before 31 December 2020 will be deemed to have an appropriate qualification and may apply for registration on the list of entitled representatives before the UPC.

4. Code of Conduct

The Litigation Committee has actively been following events surrounding the draft of the amended Regulation on Discipline and Code of Conduct (CoC) of the epi as prepared by the Professional Conduct Committee (PCC) and approved by the epi Council in order to fully take into account new professional activities for European Patent Attorneys when the UP/UPC system will start. Possible solutions have been discussed with EPO and the UPC Preparatory Committee. New amendments to the Code of Conduct have been proposed in light of discussions with the EPO and are being presented to epi Council at this meeting. It is further planned to address the EPOrg Administrative Council regarding this issue to ensure that the existing disciplinary bodies may also deal with possible violations of the Code of Conduct in relation to activities of European Patent Attorneys before the UPC.

5. UPC Rules of Procedure and Case Management System (CMS) Sub-Committee

The Sub-Committee (in collaboration with the Virtual Proceedings Sub-Committee) reviewed the Rules of Procedure (RoP) relating to the rules on video conferencing together with the "Proposal for a REGULATION OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL on the digitalisation of judicial cooperation and access to justice in cross-border civil, commercial and criminal matters, and amending certain acts in the field of judicial cooperation [Brussels, 1.12.2021, COM(2021) 759 final, 2021/0394 (COD)]". On foot of this work, the Sub-Committees worked together to prepare a letter in relation to 'virtual proceedings in the form of video conferences before the UPC'. It was ensured that the letter was fully consistent with epi's position regarding use of videoconferences before the EPO. This letter was reviewed by the Presidium, signed by the President and sent to the Administrative Committee of the UPC on the 14th March 2022. A favourable response (was received from the Administrative Committee on 21st March 2022, confirming that the relevant rules of the RoP are currently being revised 'to update measures for video conferencing, implementing appropriate flexibility while maintaining onsite proceedings as a rule'.

The Sub-Committee is currently actively working with the epi Online Communications Committee (OCC) in relation to proposed amendments to the RoP and also possible difficulties with bulk opt-outs in the CMS.

6. Enforcement and Jurisdiction Sub-Committee.

The Sub-Committee has prepared a paper in relation to the practical implications of the changes that have been recently implemented by the new German Patent Act, specifically in relation to the proportionality defense to injunctions in patent infringement proceedings (Section 139(1) Patent Act).

7. Representation and Privilege Sub-Committee.

In addition to the work on the Code of Conduct, this Sub-Committee is working with the Harmonisation Committee on behalf of the Litigation Committee in relation to the Group B+ discussion on the draft of an international "Agreement on Cross-Border aspects of Client-Patent Attorney Privilege". The epi were successful in inserting reference to regional qualifications in the proposed text of the potential international instrument on privilege, thereby ensuring that European Patent Attorneys fall within the definition of a 'patent advisor'. A further draft of the Instrument for Agreement on Cross-Border aspects of Client-Patent Attorney Privilege is expected imminently.

8. Virtual Proceedings Sub-Committee.

As mentioned above, this Sub-Committee (in collaboration with the UPC Rules of Procedure and Case Management System (CMS) Sub-Committee) examined the RoP with regard to virtual proceedings at the UPC. The committee continues to work on other aspects of the topic specifically with regard to identifying best practices (e.g., regarding technical equipment, visibility of the persons, separate channels of communication, access for the public, dealing with technical problems and so forth).

9. Brexit Implications on Patent Litigation Sub-Committee.

This Sub-Committee continues to monitor the activity of the UK Government with regard to any activity that is relevant to litigation and is as a consequence of Brexit. Some of the major topics under discussion include the difficulties that hinder the UK's accession to the Lugano Convention and the implications of same.  The Sub-Committee are also following the UK Governments public consultation on 'Exhaustion of IP rights in the UK'.

10. Educational Topics/Training Activities

The Litigation Committee is supporting and assisting the PEC in preparing and delivering the various educational topics.

The Inter-committee Working Group, for planning of epi's educational activities in connection with the new UP/UPC system has been re-activated wherein members of the LitCom are working together with members of the European Patent Practice Committee (EPPC) and members and chair of the Professional Education Committee (PEC) to prepare and deliver a programme of training for epi members.

11. Next Meeting

The next meeting of the Litigation Committee is planned for September 2022.