The Unified European Patent Court (UPC) has entered the final preparatory phase.
Austria deposited its ratification of the Protocol on Provisional Application of the Agreement on a Unified Patent Court as the thirteenth signatory state with the European Council on 18 January 2022. As a result, the phase of provisional applicability of the Agreement on a Unified Patent Court (UPCA) will enter into force. This phase includes the final organisational preparations for the launch of the UPC. The Chairman of the Preparatory Committee, Alexander Ramsay, expects that the UPC could start its work after a preparatory phase of about eight months. Subsequently, Germany as "gatekeeper" is to deposit its instrument of ratification of the UPCA, so that the UPCA will enter into full force four more months later.
Long road to the UPC
Preparations for a unified European patent court have a long history. Since the 1970s, there have been several attempts to establish a unitary patent system in Europe. After many futile attempts, however, there was little movement in the political process until the beginning of the 2010s. Austria was also the first signatory state to sign the UPCA in 2013. By 2017, the UPC was already about to be launched. However, a constitutional complaint against the German act of ratification stopped the UPC for the time being. In 2020, the German Federal Constitutional Court declared the German act of ratification null and void for formal reasons. German lawmakers made improvements in the same year, against which constitutional complaints were again lodged. In mid-2021, however, the German Federal Constitutional Court rejected the request for provisional remedy associated with the constitutional complaints, so that the way was clear for German ratification.
Start of the final preparation phase
With the decision by the German Federal Constitutional Court, it was foreseeable that the UPCA will enter into force. However, comprehensive organisational preparations are necessary before the UPC can begin its work.
For this purpose, the signatory states created the Protocol to the Agreement on a Unified Patent Court on provisional application (PAP). The PAP provides for the provisional application of certain provisions of the UPCA and the UPCA Statute in the signatory states of the Protocol. In 2021, Germany and Slovenia ratified the PAP. With Austria's ratification, the required number of 13 ratifications by signatory states of the UPCA has now been reached.
The most important consequence is that the UPC is given legal personality (Art. 1, 4 UPCA). This allows the UPC to act on its own and to push ahead with the establishment of its own organisation. For example, premises must be rented and staff hired. The IT systems of the UPC and, in particular, the case management system of the UPC must also be set up. To this end, the Administrative, Budget and Advisory Committees will start their work first, replacing the former Preparatory Committee.
Main task during the preparatory phase: selection and appointment of the judges of the UPC
A major task during the preparatory phase is the selection and appointment of the approximately 90 judges of the UPC. The court must be composed of both legally qualified and technically qualified judges. The judges must offer a guarantee of the highest professional qualifications and have proven experience in the field of patent litigation. A legally qualified judge of the UPC may be appointed if he or she possesses the qualifications required for appointment to a judicial office in a contracting member state. Technically qualified judges must have a university degree, proven expertise in a field of technology and also proven knowledge of civil law and civil procedure law relevant to patent litigation.
For the appointment of judges, Art. 16 UPCA provides for a formalised appointment procedure. According to this, the Advisory Committee first draws up a list of candidates who are best qualified to be appointed as judges of the court. The Administrative Committee then appoints the judges of the court by consensus on the basis of this list. Even though the Advisory Committee can in principle include any person on its list who meets the selection criteria, it is to be expected that experienced judges of patent litigation chambers in the signatory states will obtain a position at the UPC. The magazine JUVE Patent conducted a survey on this in November 2021, in which the respondents named mainly German and French judges considered to be proven experts in patent litigation. A position as a judge for the UPC is possible on a full-time or part-time basis.
Appointed judges are initially assigned to a pool of judges from which they are then assigned to a chamber by the president of the court of first instance on the basis of their legal and technical expertise, language skills and relevant experience.
In order to train the judges of the UPC and to ensure that the jurisdiction of the UPC is as uniform as possible, the UPCA also provides for the establishment of a training framework for judges and a corresponding training institution. The training institution is to be located in Budapest, according to the UPCA. This also needs to be set up during the preparatory phase.
Finalising the Rules of Procedure
Finally, during the preparatory phase, the legal framework for the activities of the UPC must also be finalised. The Rules of Procedure of the UPC exist so far only as a draft version and must be formally adopted by the Administrative Committee of the UPC in order to enter into force. Prior to this, an opinion of the European Commission on the compatibility of the Rules of Procedure with European Union law must be obtained in accordance with Art. 41, para. 2, clause 2 UPCA. The current 18th draft version of the Rules of Procedure still dates from 2017. Hence, some amendments may still be made during the preparatory phase. The same should apply to the rules on court costs and recoverable costs, which the Preparatory Committee had already presented in 2016 as an addition to the Rules of Procedure.
Furthermore, during the preparatory phase, the Mediation and Arbitration Centre for Patent Matters according to Art. 35 UPCA, based in Lisbon and Ljubljana, must also be established. Mediation and arbitration rules will be created and a list of mediators and arbitrators will be drawn up to assist the parties in resolving disputes.
Completion of preparations and open questions until the launch of the UPC
As soon as the preparations have been completed and the signatory states consider the UPC to be operational, the UPCA can enter into full force. In order to be able to control this point in time, the signatory states have agreed that Germany as a "gatekeeper" will deposit its ratification of the UPCA only after the completion of the preparatory phase. The UPCA will then enter into force on the first day of the fourth month after the deposit of the German ratification.
It remains to be seen whether the signatory states will agree during the preparatory phase on whether and where a third section of the central division of the UPC will be established. The wording of the UPCA expressly provides that the section responsible for the fields of human necessities, chemistry and metallurgy should be located in London. As a result of the Brexit, however, the UK withdrew its ratification of the UPCA eliminating the possibility that the UPC will establish a seat there. Milan or The Hague are currently being discussed as alternative locations. According to Alexander Ramsay, the chairman of the Preparatory Committee, the open question of another section of the central division is not expected to slow down the start of the UPC. For the time being, the remaining signatory states have informally agreed that the central division locations of Munich and Paris will share responsibility. However, a long-term solution is still being sought.
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