Report of the Litigation Committee

T. Walshe (IE), Secretary

1. Committee - Structure

2. Update on the Status of the UPC

Since our last report, Germany has deposited its instrument of ratification of the Agreement on a Unified Patent Court on 17^th February 2023. Consequently, the Unified Patent Court will start operation on 1^st June 2023. The sunrise period started on 1^st March 2023.

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

3. Meetings of the Litigation Committee

The most recent meeting of the Litigation Committee was held on 28^th March 2023. It was originally planned that this meeting would be an in-person meeting in Munich but unfortunately at the last moment it became necessary to convert the meeting to a virtual meeting due to industrial action within Germany which directly impacted the ability for members to travel to Munich to attend the meeting.

The UPC Registrar, Mr. Alexander Ramsay was welcomed as a guest speaker during the meeting. Members of the Inter-Committee WG on UP/UPC educational activities lead by PEC were invited to join this section of the Litigation Committee meeting. Mr. Ramsay’s presentation focused on the current work being done at the Registry in preparation for the commencement of the Court on 1^st June 2023. Additionally, Mr. Ramsay acknowledged the difficulties and challenges the Registry and UPC IT team are having in relation to enquiries from the public and separately the sunrise period functionalities. He outlined how the Registry and UPC IT Team are working to address these matters.

4. Representation at the Administrative Committee of the UPC

There have been two meetings of the UPC Administrative Council of the UPC on 19^th October 2022 and 8^th February 2023 respectively since our last report. Peter Thomsen and Kim Finnilä together with Triona Walshe (substitute for Peter Thomsen), have represented epi at these meetings.

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

The main focus of the UPC Rules of Procedure and CMS sub-committee has been cooperating with the Administrative Committee UPC Advisory Group in preparing for the meetings of the Administrative Committee of the UPC. A significant development stemming from these meetings is that the Administrative Committee UPC Advisory Group of epi have established direct contact with the UPC CMS IT team. Through this channel it has been possible to raise the issues and concerns that epi members have as users of the CMS system.

A first meeting was held with the UPC CMS IT Team on 16^th November 2022. A second meeting was held a month later, on 16^th December 2022, during which a first summary of the postings in the “epi Forum for sharing UPC CMS experiences and solutions” was shared with the UPC CMS IT Team. Further meetings were held on 26^th January and 22^nd February 2023. The UPC Registrar Alexander Ramsay was also present during the 2023 meetings. For all these meetings updated summaries from the above-mentioned epi Forum were shared. The members of the LitCom wish to acknowledge and thank Tassilo Meindl (IT) from the OCC, who prepared excellent summaries of the epi Forum.

It seems fair to say that this cooperation has been extremely beneficial both for the UPC and its IT Team as well as for all epi members. Quite a number of issues have been clarified, amendments to the CMS have been made, and some legal issues not totally apparent from the UPC RoP have been clarified.

However, this is work in progress. Our next 5^th meeting with the UPC IT Team will be scheduled for 17^th April 2023 in advance of the 5^th UPC Administrative Committee meeting (virtual) scheduled for 24^th & 25^th April 2023.

Additionally, Ferenc Török has undertaken an analysis of ‘Rule 220: Appealable Decision’ of the adopted Rules of Procedure of the UPC. It has been agreed that there is a potential issue e.g. regarding the time limit to file a request for leave of appeal regarding some orders and decisions issued by the Court of First Instance. The sub-committee is currently working on this matter and will bring forward a proposal how to address the UPC Administrative Committee in this matter.

6. Representation and Privilege Sub-Committee

The Representation and Privilege sub-committee reported that the interpretative statement regarding the applicability of the Regulation on Discipline and the Code of Conduct (document CA/41/22 ‘Disciplinary framework for European Patent Attorneys acting before the Unified Patent Court’) was tabled and adopted at the 173^rd meeting of the Administrative Council of the EPO on the 13^th &14^th December 2022.

Additionally, the UPC ‘Code of Conduct for Representatives’ was adopted by the UPC Administrative Committee on 8^th February 2023.

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 Agreement on Cross-Border Aspects of Client-Patent Attorney Privilege”. There has been little advancement on this topic since the previous report.

7. Enforcement and Jurisdiction Sub-Committee

The enforcement and jurisdiction sub-committee continue to work on the following topics: trade secrets; damages and preliminary injunctions.

8. Virtual Proceedings Sub-Committee

The virtual proceedings sub-committee has the following working topics: Virtual proceedings before the EPO (in collaboration with the EPPC) and UPC (in collaboration with the UPC Rules of Procedure and CMS sub-committee), 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); data protection issues; requirement of a request for judicial assistance for participation in Court proceedings via ViCo from foreign country; and the survey regarding national practices.

Currently, the sub-committee together with the EPPC are preparing a response to the Decision of the President of the EPO dated 22 November 2022 concerning the format of Oral Proceedings before examining and opposition divisions, the Legal Division and the Receiving Section.

9. Brexit Implications on Patent Litigation

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. The sub-committee provided a briefing on the key points of the Windsor Framework and its implications on the movement of goods between Great Britain and Northern Ireland; and Great Britain and the Republic of Ireland.

10. BSH Hausgeräte GmbH v Aktiebolaget Electrolux C-339/22

The above case is a referral from the Swedish Patent and Market Appeal Court to the CJEU in which questions relating to interpretation of Article 24 of Regulation (EU) No. 1215/2012 (Brussels I) have been raised. Torbjörn Presland (SE) presented an excellent synopsis of the background to the case which led to this referral. A copy of the presentation is attached in the Annex for your referral.

11. Educational Topics/Training Activities

The Litigation Committee continues to support and assist 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 the programme of training for epi members.

12. Next Meeting

The next meeting of the Litigation Committee is planned for September/October 2023. The actual date is yet to be confirmed.

This committee report is the report that was submitted for the C94 Council Meeting in Malmö on 2 and 3 May 2023 during which Peter Thomsen was elected President of epi. Peter Thomsen subsequently resigned as both the Chair and as a member of the Litigation Committee post the C94 Council Meeting. Kim Finnila is currently the Acting Chair of the Litigation Committee..