Report of the Litigation Committee

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

The Litigation Committee held its third virtual meeting of the year on 1st September 2022. The main topics discussed at this meeting are presented below.

The UP and the UPC:

Preparations for commencement of the Unitary Patent and the Unified Patent Court are under way with an expected start date in early 2023.

The Litigation Committee is pleased to report that epi has been awarded observer status at the Administrative Committee of the Unified Patent Court. As observers, epi is able to attend those parts of the meeting that are not designated as confidential. A newly formed Administrative Committee UPC Advisory Group, has been established to prepare for the meetings of the Administrative Committee. Peter Thomsen and Kim Finnilä, the Chair and Vice-Chair of the Litigation Committee respectively, have been selected as representatives of epi at the UPC Administrative Committee meetings.

An amended version of the 18th draft of the Rules of Procedure of Unitary Patent Court (RoP) together with the table of fees of the UPC were adopted at the Administrative Committee meeting of 8th July 2022. The adopted amended version of the 18th draft of the RoP and the fees came into force on 1st September 2022. Other decisions including the 'setting up of local and regional divisions of the Court of First Instance of the UPC' and decisions relating to organizational rules and human resource matters were also adopted at this meeting. The RoP and Case Management System (CMS) Sub-Committee together with the Virtual Proceeding Sub-Committee, the OCC and the newly formed AC UPC Advisory Group of the epi are currently studying the adopted RoP.

A consolidated version of the RoP together with the fees can be found on the Unified Patent Court website at the link below.

The RoP and CMS Sub-Committee reported that they had received a positive response from the Administrative Committee of the UPC in reply to the letter, which was prepared in cooperation with the Virtual Proceeding Sub-Committee, concerning the use of video conferencing for oral hearings. Rule 112.3 RoP now includes the possibility of video conferences for oral hearings.

The RoP and CMS Sub-Committee also reported that a letter concerning the accessibility of orders and decisions (Rule 262 RoP - Public Access to the Register) has been amended so that orders and decisions made by the Court will be published.

It was noted that the UPC Implementation Team announced on the 25th August 2022 that a major milestone in the implementation of the CMS had been achieved namely, the use of a strong authentication scheme to access and use the CMS. The strong authentication system requires that an electronic identification system which is compliant with EU regulation No. 910/2014 ('eIDAS' regulation) is used instead of the current account and password system. It is expected that implementation of the strong authentication scheme will be activated in the next release of the UPC CMS V0.65 in mid/end September 2022. The UPC RoP and CMS Sub-Committee together with the OCC are studying the impact and requirements of the strong authentication scheme.

The Representation and Privilege Sub-Committee reported that an amended version of the epi Code of Conduct referring to the UPC was approved in May at the 92nd epi Council meeting in Munich. An agreement has been reached with the EPO whereby the present Regulation on Discipline would remain unchanged and an interpretative note would be issued by the Administrative Council (AC) of the EPO. It is proposed that this matter will be raised at the next meeting of the AC of the EPO due to be held in October 2022.

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

Further Topics Discussed:

In addition to the Code of Conduct discussed above in the context of the UP/UPC, the Representation and Privilege Sub-Committee continues its work with the Harmonisation Committee on behalf of the Litigation Committee in relation to the Group B+ discussion on the draft proposal for an international "Agreement on Cross-Border aspects of Client-Patent Attorney Privilege". It was noted that this work is progressing slowly.

The Enforcement and Jursidiction Sub-Committee provided an interesting report on the Complaint (DS611) by the European Union against China before the WTO Disputes Settlement System in relation to enforcement of Intellectual Property Rights. It was noted that Canada, Japan and the United States have requested to join the consultation.

Activities of the UK Government that are relevant to litigation and are as a consequence of Brexit continue to be monitored by the Brexit Implications on Patent Litigation Sub-Committee. Some of the major topics under discussion include the implications of the difficulties that hinder the UK to accede to the Lugano Convention and the UK Governments public consultation on 'Exhaustion of IP rights in the UK'.

C-44/21 - Judgement of the ECJ (28th April 2022):

Ms. Verena Topert provided a summary report of the recent judgement of the ECJ in answer to the question addressed to the Munich 1 Regional Court in relation to interpretation of Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of Intellectual Property Rights.