Presentation on theme: "The UPC in the European Patent Litigation landscape"— Presentation transcript:
1The UPC in the European Patent Litigation landscape Willem A. HoyngAIPLA Annual Meeting23-25 October 2014, Washington DC
2UPC Proceedings (5 minutes) Front loadedContinental with touch AnglosaxonFirst part (“written proceedings”): In writing, two exchanges of written submissionsSecond part (“interim proceedings”): the judge rapporteur makes sure everything is ready for oral hearingThird part (“oral proceedings”): In principle: one day hearing: oral argument plus – as far as relevant - hearing witnesses, experts (under the control of the presiding judge)Decision in about 12 monthsFourth and fifth part: Damages and costs: optionalPrivilige: Litigation privilige for lawyers and patent attorneys (also in house) as to confidential communication in which they act in their professional capacityWill in house privilige survive? (Germany is against; see also ECJ)
3Rules on discovery (2 minutes) In accordance with Enforcement Directive (art. 6, 7, 8)Pre trial (ex parte) seizure of documents, samples etc.Pre trial freezing of assets(Pre trial?) ordering a party or third party to produce evidence (art. 59 Treaty) Rule 190During proceedings: order to communicate information, order to do experimentsNo hearing of witness, experts prior start of proceedings (so no deposition)PS: Judge Rapporteur can ask to produce documents etc.
4Judge Rapporteur (2 minutes) Adversial but with inquisitorial possibilitiesCan give further extensions in written phaseCan organise (by telephone or video) interim conferenceCan ask: further clarification, produce evidence, produce specific documents, order separate witness and expert hearing before panel and in general what he deems necessary as prep for oral hearingCan “prepare” witnesses and expertsPresident (court) determines what is relevant and leads the interrogation. Parties are allowed to ask questionsSanction: decision by default by the Court (“may”)
5Timing / Costs (5 minutes) Writ of summons: check by registryAnswer / counter claim: three monthsReply / answer counter claim (amend patent): two monthsRejoinder / reply counter claim: one monthsRejoinder counter claim: one monthBut Judge Rapporteur can give extensions or allow further pleadingsInterim proceedings: 3 months (Judge Rapporteur)Oral hearing 1 day or exceptionally moreJudgement: endeavour 6 weeks (118.7)Loser pays in accordance with art. 69 of the Agreement (118.6)Art. 69: ceiling for costs in ROP: ROP refers to Admin Com (152.2). Is this in accordance with Enforcement Directive art. 14?
6Forum Shopping (2 minutes) Favourable for patentee: He can choosePlace of residence or principle business or business (broad!)Place of (threatened) infringement (internet)Co-defendants (same infringement plus commercial relationship)Agreement with defendentTorpedo: invalidity or declaration of non infringement in central division can be moved to local / regional division of choice by patenteeCentral court if infringement in Malta, Luxembourg or one of the defendants is from outside EUNB:Unilever clause: defendent can avoid regional court and have case referred to the central court in case of infringement in the territory of three regional courtsPaneuropean injunctions including Turkey, Spain etc. possible? (See art. 31 Treaty but also Regulation no 542/2014))