Im Interview erörtern die fünf internationalen Herausgeber:innen von „European Patent Litigation in Practice“ (EPLP), der neuen Fachzeitschrift von Wolters Kluwer, die sich mit dem Patentrecht in Europa befasst, den Erfolg des Einheitlichen Patentgerichts (EPG) im ersten Jahr seiner Tätigkeit.
Das Interview, welches auf Englisch durchgeführt wurde, zeigt, dass die fünf Expert:innen geteilter Meinungen über die Leistung des Gerichts sind: Einige loben die Schnelligkeit und die Herangehensweise an die Fälle, während andere Bedenken hinsichtlich der Akzeptanz durch die Nutzer:innen äußern und Verbesserungspotenzial sehen. Darüber hinaus werden auch die Auswirkungen des EPG auf die Arbeit der Anwält:innen und die kürzlich erfolgte Eröffnung der Mailänder Zweigstelle der Zentralkammer thematisiert.
The Unified Patent Court (UPC) has started its operations about 12 months ago. How would you rate the UPC’s success in its first year?
Daniel Hoppe: It is difficult to judge the success of a court. What are the criteria for this? If the question is whether the court has fulfilled the expectations formulated by itself (or by the legislator), these must first be identified.
Speed has always been one of the main issues: In this regard, it must be said that the UPC has not been a disappointment so far. In the 10xGenomics case, the court ruled in the second instance around eight months after an application for a preliminary injunction had been filed, examining in detail both the infringement situation and the validity of the patent at issue. This would hardly be conceivable in a national court, particularly with regard to the examination of the validity.
If we look at the quality of the decisions, it is not yet possible to reach a judgement. This requires a larger number of decisions, which we will receive in the coming months and years. If, on the other hand, we focus on user acceptance, the court is certainly not yet a success. There is no getting around the observation that some areas are not yet represented at all or, at best, are barely represented (pharma is one example) because (potential) users do not yet seem to trust the system. There is no tangible reason for this. However, there is still great uncertainty with regard to the costs. The divisions urgently need to establish guidelines here.
Which improvements do you think are the most urgent to enable the UPC to realise its full potential?
Jeroen Boelens: There are probably three things to mention: One is the treatment of the cases themselves. There are considerable differences between the divisions here. It would be desirable for the judges to adopt as standardised an approach as possible. This includes the judges using the oral hearing to encourage discussions about the case. This in turn requires an open and transparent conduct of the hearing. In my view, judges are still a little too caught up in their national procedural traditions.
Secondly, there is the presentation of the court outside the courtroom. For some time now, some judges have been taking every opportunity to advertise the virtues of the UPC. It would be desirable for this to be done on an even broader basis to inspire greater confidence in the functioning of the court. This also includes the "public relations work" of the Court of Appeal. Of course, the divisions should first and foremost let their decisions speak for themselves. However, especially in the early days of the UPC, this may not be enough to increase acceptance very quickly.
Thirdly, it is widely acknowledged that the success and viability of the UPC are contingent upon the breadth of support it can amass from various stakeholders. Given the heterogeneous nature of the divisions involved, ensuring transparency is paramount. Embracing transparency not only fosters trust but also bolsters the legitimacy of the entire system. Facilitating access to decisions and, wherever feasible, making procedural documents readily available to observers are pivotal steps towards enhancing public confidence in the UPC's operations and outcomes.
In legal terms, what are the most important developments that can be attributed to the UPC?
Konstantin Schallmoser: There is no concrete answer to that yet. From a German perspective, it should of course be mentioned that the UPC has, as expected, abandoned the separation principle. Apart from that, however, the major legal innovations have yet to be seen. This will certainly take time, as well as comprehensive practice by the Court of Appeal.
In any case, from a legal perspective, the large number of questions that have already arisen from a procedural point of view is remarkable. This is an indication that the Rules of Procedure leave questions unanswered in many respects and are perhaps more a compromise of many national positions than a monolithic set of procedural rules. This begins with the unresolved question of which "old cases" the UPC is actually responsible for.
These procedural questions certainly do not make it easier for potential parties to quickly gain confidence in the new system. However, there is hope that these issues will be resolved sooner rather than later.
A major development is of course, at least from a German perspective, the fact that the UPC deals with validity and infringement at the same time. This has a particularly significant impact in preliminary injunction proceedings. In preliminary injunction proceedings, a decision by the Court of Appeal can be reached after just nine or ten months, and it covers the validity of the patent without the need to file a counterclaim for revocation. The fact that preliminary injunction proceedings are heard in the last instance by the same court as the proceedings on the merits naturally makes the preliminary injunction proceedings even more attractive. This is also due to the very low court fees, for this type of proceedings, which only consist of a fixed fee and is therefore independent from the value in dispute.
How has the UPC affected the work of the representatives?
Ina Schreiber: The work has become even more international. Multinational ad-hoc teams are being formed to conduct proceedings at the UPC. This seems to show that international law firms are not necessarily superior to smaller and more agile units.
Apart from that, as a lawyer you have to reckon with the fact that the UPC judge in charge has been a national judge for most of his professional life and therefore brings his routine and habits to the proceedings to a large extent. This is not easy for lawyers from jurisdictions other than that of the division in question. Local lawyers therefore still have a great advantage in terms of experience. As the number of proceedings at the UPC is still modest, it will certainly take some time before these differences in experience can be reduced. Until then, it is advisable to always have a lawyer on board who can contribute personal experience with the judges from the national proceedings.
In addition to working in multinational teams and reckoning the fact that UPC judges come with their background as national judges, the UPC’s more interactive approach to court hearings means an important change to pleading practices, at least for lawyers from countries in which lawyers are used to plead their case one after the other without interruption or other intervention of the judge. Here again, it is advisable to collaborate with lawyers who are used to this kind of hearing format from their national experience but also with European patent attorneys who have a profound experience in interactive pleadings from their oral proceeding practice in EPO oppositions.
Which impact will the start of the Milan branch of the central division have?
Tankred Thiem: The inauguration of the Milan seat marks a significant milestone for both Italy and the participating member states. By opting for Italy, a former opponent of the project, as a third host-country of a seat of the central division, the UPC sends a forceful message of inclusivity, evidencing the integrative approach which hopefully increasingly will characterize the project. Moreover, Milan’s local UPC division is likely to benefit from the enhanced attractiveness which may also spread over to Milan’s domestic Enterprise court. Also, in relation to the national system of patent litigation, we may expect the development of a more approach, characterized by a spirit of adopting and evaluating experiences and inspirations from the entire UPC landscape.
About EPLP:
The new journal EPLP provides commentary and insights on decisions of the Unified Patent Court. It also covers litigation before the national European courts with cross-border implications.
The aim of our journal is to provide a comprehensive overview not only of developments in major litigation hotspots, but also in other member states of the EPC and the UPC Agreement. To this end, the journal has an editorial team with members from Germany, France, Italy and the Netherlands and an advisory board with members from the other UPC member states as well as the UK.
More information: shop.wolterskluwer-online.de/rechtsgebiete/wirtschaftsrecht/marken-patentrecht/60033000-eplp-european-patent-litigation-in-practice.html