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Last week the latest version of the draft Rules of Procedure were published on the UPC Preparatory Committee website (see here).

This “final” version of the 18th draft of the Rules of Procedure was adopted by the UPC Preparatory Committee on 15 March 2017.  The Rules of Procedure are still in ‘draft’ form as the Administrative Committee must adopt them, and this cannot take place until sufficient member states have ratified the UPC Agreement and acceded to the Protocol on Provisional Application.  Given the UK Government’s decision on 18 April 2017 to call a general election, ratification of the UPC Agreement and accession to the Protocol on Provisional Application by the UK may be pushed back by some months, delaying both final approval of the Rules of Procedure and the launch date of unitary patents and the UPC.   The target start date for the provisional application phase was the end of May 2017.

The key provisions affected by the changes to the Rules of Procedure are Opt Out and Provisional Measures.

Opt Out

Rule 5 now clearly states that an opt-out application must be lodged on behalf of each proprietor of the European patent who is entitled to be registered in the national patent register, not just those who are currently entered on the register.  

The validity of opt outs will not be checked before they are registered and any error may invalidate the opt-out until the correction has been registered.  This includes whether an action has been started before the UPC.  So the devil is in the detail; ensuring that a proprietor’s patent(s) has been properly opted out will be important to avoid any unwanted litigation before the UPC.

Provisional Measures

The rules relating to provisional measures (i.e. preliminary injunctions) have also been amended, specifically Rule 209.  The latest draft now provides that, if an applicant seeks an application for provisional measures without giving the defendant an opportunity to be heard and the Court decides not to grant such provisional measures, the applicant can elect to withdraw its application and request that the application is kept confidential.  A similar mechanism already applied in relation to applications for the preservation of evidence and protective letters.

This could open up the UPC as a forum for fishing expeditions for parties who want to try their luck in seeking provisional measures without alerting the alleged infringer.  However, this tactical option will have to be balanced with the cost of making such applications.

 


20 Apr 2019