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27 July 2015 – 18th Draft of UPC Rules of Procedure

27 July 2015

The 18th draft of the UPC Rules of Procedure (the Rules) is now available (click here). The 18th draft of the Rules, presented at the 10th meeting of the UPC Preparatory Committee on 10 July 2015, comes eight months after the public oral hearing on the 17th draft held last November in Trier, Germany. The final form will be agreed at the Preparatory Committee's meeting in October 2015.

The number and extent of changes in the 18th draft are likely to be less than what some stakeholders were hoping, especially in relation to substantive issues such as the so-called "injunction gap" and the power to accelerate proceedings under Rule 40. However, the 18th draft does clarify some lingering procedural uncertainties which are summarised as follows:
  • Opt-Outs: Rule 5, which governs applications to opt-out European patents and patent applications from the system, was amended to include procedures for opt-out where the patent is owned by two or more proprietors (see Rule 5(1)(b)) and to provide clarity in relation to opt-outs governing Supplementary Protection Certificates (see Rule 5(2)(d)). In the event that corrections have to be made to an opt-out application to comply with Rule 5's requirements, the opt-out application will only become effective from the date of the corrections (see Rule 5(6)). Applicants must therefore take all steps to ensure that their application satisfies Rule 5, otherwise they could be prohibited from opting out in the event that an action in respect of their patent is commenced in the UPC before the correction is made.‎
  • Actions before the Central Division: Rule 17(3) has been amended to provide a procedure for determining which seat of the Central Division will hear an action where the dispute concerns a single patent with more than one classification, or several patents, the majority of which do not share a single classification. In both cases, the Registry will refer the action to the presiding judge of the seat that has jurisdiction over the first classification of the single patent or, in the case of multiple patents, the patent first listed on the Statement of Claim. If the presiding judge thinks his or her seat is appropriate, the action will be heard by that seat, otherwise it will be referred to the seat the judge feels most appropriate. The presiding judge of that seat will also decide if his or her seat is appropriate. If it is not, the matter will be referred to the President of the Court of First Instance who will determine the seat of the action. Litigants commencing revocation actions in respect of multiple patents that fall under this Rule may wish to consider which patent they list first on their Statement of Claim as that may ultimately be determinative of the seat that will hear the action.
  • Reply to Statement of Defence: The deadlines for Replies to Defences set out in Rule 29 have been extended to two months following service of the Statement of Defence or Defence to Counterclaim.
  • Failure to provide Security for Costs: Rule 158 has been amended to provide that where the party subject to a Security for Costs order fails to comply within the time stated, a decision by default may be given in accordance with Rule 355.
  • Applications for Legal Aid: New Rule 378A specifies the type of proof that is required by the Court to determine an application for legal aid.