Unified Patent Court Update 3 March 2016 · Unified Patent Court Update: 3 March 2016 Here is the...

1

Unified Patent Court Update: 3 March 2016

Here is the latest UPC update:

Preparatory Committee: The 14th Preparatory Committee convened 24th and 25th February.

The first day the Committee had updates from Member States on their ratification status and a

discussion on the UPC operating model, including the structure of the support functions of the new

organisation and agreed the Protocol on Privileges and Immunities.

A suite of rules were also agreed which included those governing the Registry of the UPC and the

Rules of Procedure of the Advisory Committee. There was also a discussion on the Arbitration Rules

and the Rules of Operation of the Arbitration and Mediation Centre which will be agreed at the April

meeting.

The Rules of Mediation, which were agreed in December, are now available on the UPC website

On the second day the Committee agreed the UPC court fees and recoverable costs. This is a

significant step forward and the level of commitment and hard work by the dedicated fees sub-

group was acknowledged by the Committee.

There was an update on various financial issues followed by a presentation of the Case Management

System and demonstration.

Q&As relating to the Case Management System can be found here.

The level of net salaries for full-time judges of the UPC was agreed at 11 and 12 thousand euros per

month, for the Court of First Instance and Court of Appeal respectively. A discussion on the

recruitment timetable followed with a proposal expected to come back to the Committee in the

spring.

IT: In addition to preparing for the Preparatory Committee the team also attended the Drafting

Committee, where finishing touches were put to the front end of the system. Work will now take

place to ensure a smooth handover to Luxembourg.

If you have still not registered onto the case management system and would like to see the work

that has been done you can register here http://secure.unified-patent-court.org/login. We still

welcome feedback via the "send feedback" button at the bottom of the web page.

Facilities: The construction works continue on our floor in Aldgate Tower with completion expected

by early summer.

Legal: Debates on the SI in both Houses of Parliament took place on Tuesday 1 March (House of

Commons) and Wednesday 2 March (House of Lords) with the motion being agreed. Work will be

begin shortly on drafting the P&I Order.

HR & Judicial Training: Now that the salaries have been agreed the HR working Group will now move

onto finalising the details of gross salary, pension and allowances for judicial staff.

Work to finalise the recruitment process, training provision and service regulations also continues.

2

Finance: Now that fees have been agreed the Finance working group will focus more on the first

budget of the UPC, which will be discussed at their meeting next week in Paris.

Unitary Patent: Details of the EPO select committee and other EPO meetings are published at

http://www.epo.org/about-us/organisation/calendar.html

An official Communiqué of the last Select Committee meeting is available on the EPO website at:

http://www.epo.org/about-us/organisation/communiques.html

Relevant documentation regarding the rules relating to Unitary Patent Protection can be found at:

http://www.epo.org/about-us/organisation/select-committee/documentation.html

As always, please feel free to forward this note to anybody who may find it useful.

Janis

Janis Makarewich-Hall | Deputy Director, Head of UPC Taskforce

Intellectual Property Office | 1st Floor | 4 Abbey Orchard Street | London | SW1P 2HT |

www.gov.uk/ipo

3

Unified Patent Court Update: 12 February 2016

Here is the latest UPC update:

Governance: The Steering Board met on Friday 5 February where they discussed the forward work

programme, possible next steps with evaluation and a communication / awareness raising /

education plan.

Preparatory Committee: Preparations are underway for the 14th Preparatory Committee taking

place in Brussels on 24 and 25 February. On the agenda for agreement will be operating costs and

operating model of the court. Rules of the Registry and Rules for the Advisory Committee will be up

for agreement as well as judicial salaries and allowances and the package of court fees, SME support

and recoverable costs. Members will also receive a presentation of the Case Management System

by the IT Working Group.

IT: The team are approaching the end of refining the front end of the system and will attend the

expert drafting committee meeting towards the end of February.

A reminder that if you have not registered onto the case management system yet, there is still time

to do so. You can register here http://secure.unified-patent-court.org/login. Please provide

feedback via the “send feedback” button at the bottom of the web page. All feedback is gratefully

received.

Facilities: The construction works have begun on our floor in Aldgate Tower with completion

expected by early summer. We hope to have some photographs of progress shortly.

Legal: The SI is still undergoing scrutiny in Parliament. After the scrutiny process is finished the

legislation will be debated in both Houses of Parliament - a date will be assigned once the scrutiny

process is finished.

HR & Judicial Training: Work continues within the HR & Judicial Training working group on the

timescale for judicial appointments as well as terms and conditions.

Finance: The Finance Team have been busy preparing for the February Preparatory Committee

which includes final discussions on fees and recoverable costs and initial thoughts on tax. In

addition, work continues on preparing the Court's first budget.

Unitary Patent: Details of the EPO select committee and other EPO meetings are published at

http://www.epo.org/about-us/organisation/calendar.html





4

Janis



www.gov.uk/ipo

5

Unified Patent Court Update: 29 January 2016

Here is the latest update on the UPC:

Preparatory Committee: The Preparatory Committee Chairman met with all the co-ordinators in

Brussels this week. The agenda for next month’s Committee meeting was agreed. There are some

big-ticket items coming up for agreement including judicial salaries & allowances and the

recruitment procedure, a suite of legal rules including those on the Registry, Advisory Committee

and Arbitration and perhaps most awaited the final proposal on court fees, SME support and

recoverable costs. In addition there will be a presentation of the Case Management System (CMS)

ahead of working towards a seamless handover to Luxembourg who will provide the support on the

IT infrastructure going forward.

We will also be pressing for final agreement on the text for the Protocol on Privileges and

Immunities so we can progress with the necessary legislative order.

The Chairman also agreed with Legal Framework working group coordinator that the Rules of

Procedure should return to the Committee at its April meeting, although already agreed, it will be

necessary to take into account the agreements on court fees and other minor changes (including

considering how to deal with administrative errors in the opt-out process).

There are now nine member states who have ratified with Finland being the latest.

Governance: I am pleased to announce the Unified Patent Court website has moved to a new

content management system. This will enable better integration with the Case Management System

and allow us to start work on allowing public searches of cases and documents. The updated

website will also enable RSS feeds for new content and should perform better globally.

The Project Board met on 27 January where they discussed in depth the current risks and

mitigations, alongside detailed discussions on our finance and HR & judicial training work streams.

IT: The team continue the process of refining the front end of the system as well as working on the

inputs/outputs with help from Kevin Mooney of the UPC Executive Committee.

Pierre Véron very kindly hosted a presentation of the IT Case Management System in Paris on

Monday 25 January. A more in depth demonstration was also given of the opt-out process as well as

judicial, internal judges and clerks.

The Case Management System is still available so if you have not yet registered, please do so. You

can register here http://secure.unified-patent-court.org/login. Please provide feedback via the

“send feedback” button at the bottom of the web page. All feedback is gratefully received.

During the workshops carried out over the last year it has been identified that users would like to

interface directly with the Case Management and eFiling system to submit forms, query the opt-out

status and case information.

There is a workshop for suppliers of case management, bundle, or patent management software to

discuss options for enabling API access to the courts eFiling system. This will be hosted in London

6

and you can register here, https://www.eventbrite.com/e/unified-patent-court-api-workshop-

tickets-20726369128

Facilities: We are continuing to work on the final design for Aldgate Tower and anticipate the

construction process to start in the last week of January and hope to have completed by the end of

May. There was also a meeting of the Facilities Working Group where interpretation and translation

requirements were discussed.

Legal: Draft secondary legislation that will amend UK patent law to implement the UPC Agreement

was laid in Parliament on 19 January. You may view and download the draft legislation and

accompanying documents from the legislation.gov website at

http://www.legislation.gov.uk/ukdsi/2016/9780111142899. The legislation is currently undergoing

scrutiny by the Joint Committee on Statutory Instruments and the House of Lords Secondary

Legislation Select Committee. After the scrutiny process is finished the legislation will be debated in

both Houses of Parliament - a date will be assigned once the scrutiny process is finished.

Work continues to resolve the final issue outstanding on the Privileges & Immunities Protocol.

HR & Judicial Training: Work in the HR group has continued at pace and the meeting of the HR

working group in Brussels on the 21st of January has made good progress on the judicial recruitment

procedure ahead of agreeing the proposed plan at the next Preparatory Committee. Work on Terms

and Conditions is also progressing well with agreement being reached on a number of sections. We

remain confident that judicial appointment at the UPC will remain an attractive option to

appropriate candidates from the UK.

Finance: The first budget sub group meeting took place on 18 January, followed by the fees sub

group (19 January) and the main finance working group on 20 January. The meetings were

productive with constructive discussions around the budget and the proposal for court fees and

recoverable costs. The finance working group has also agreed to use an intermediary body to

research pensions, health care and social security.

Unitary Patent: The EPO Select Committee has concluded its work on substantive items (fee levels,

distribution key, and administrative rules). It will meet again in March to finalise administrative

instructions based on the provisions agreed in December. The committee will have oversight of the

EPO's administration of the Unitary Patent when the system comes into force.

Details of EPO meetings are published at http://www.epo.org/about-us/organisation/calendar.html





Janis



www.gov.uk/ipo

7

Tel: +44 (0)20 7034 2856 | Mob: +44 (0)7795 665 723 | Email: [email protected]

8


Here is the latest on the UPC.

Following the break over the festive period it is now full steam ahead with the Preparatory

Committee’s focus on completing their work by the middle of this year.

Governance: The Project Board met on 16 December where they were presented with the IT (Case

Management System) work plan. Members were also brought up to date on the status of the fit-out

for Aldgate Towers.

IT: The technical team have completed the workshops across Europe and was very pleased with the

number of people who attended and the feedback obtained. Please do keep proving any feedback

as it continues to help towards the development of the system.

The team is in tentative talks at the moment regarding a possible short presentation of the system in

Paris but are awaiting confirmation of a date and place. When this is agreed it will be advertised

through the normal routes e.g. Eventbrite, email etc.

The team is now in the process of refining the front end of the system with advice from members of

the Expert Panel and future plans include working with Judges and staff (when appointed) to

complete the back end of the Case Management System.

We are also working with Kevin Mooney from Simmonds & Simmonds regarding inputs/outputs to

the Case Management System, as well as stress testing the system.

A reminder that if you have not registered onto the case management system yet, there is still time

to do so. You can register here http://secure.unified-patent-court.org/login. Please provide

feedback via the “send feedback” button at the bottom of the web page. All feedback is gratefully

received.

Facilities: We are continuing to work on the final design plan for Aldgate Tower and anticipate the

construction process to start in the last week of January which we hope to have completed by the

end of May.

Legal: We are in the final stages of preparing to lay the secondary legislation that will amend the

Patent Act 1977 to implement the UPC Agreement. The Government Response to the consultation

on the legislation will be published today (15th January) and is available on our website at

https://www.gov.uk/government/consultations/secondary-legislation-implementing-the-unified-

patent-court

We aim to have the legislation completed by this spring and expect to lay it in Parliament soon.

HR & Judicial Training: Work will intensify on the eligibility options as well as the judicial terms and

conditions. We are also moving towards conclusion on the remuneration package, with discussions

around pensions now being prioritised. The HR & Judicial Training Working Group is meeting in

Brussels next week.

9

Finance: Work within the Financial work stream is moving apace with the first budget sub group

meeting taking place on 18 January, quickly followed by the fees sub group (19 January) and the

overarching Finance working group (20 January). As well as the Budget and Fees, also on the agenda

for the 20th are pensions and social security. Domestically, the case counting report for 2014 has

been received and analysis of the figures will now take place.

Unitary Patent: At its meeting of 15 December the EPO Select Committee (SC) adopted financial and

legal provisions that will enable the EPO to administer the Unitary Patent. These include a Top 4

renewal fee level, rules relating to Unitary Patent Protection, and arrangements for the distribution

of renewal fees. This is an important and significant step towards the introduction of Unitary Patent

Protection.







Janis



www.gov.uk/ipo


10

Unified Patent Court Update: 23 November 2015


We are pleased that the Alpha version of the case management system has been released for testing

and is being well received. As mentioned before it is very important that potential users of the

system have the opportunity to look at and test the system. I encourage you to help shape the way

the system looks and feels, and please provide us with the feedback we need to further develop the

system that will work for all potential users of the court.

Register and create an account here: http://secure.unified-patent-court.org/login.

To provide feedback please use the 'send feedback' button at the bottom of the web page. All

feedback is gratefully received.

Preparatory Committee: As I mentioned in my previous update the next meeting is on 7-8

December. The Executive Group (which is the Chairman and working group co-ordinators) met on

19 November to discuss and agree the agenda. At December’s meeting it is now expected that the

protocol on privileges and immunities will be agreed. There will be further discussions on the rules

of the Registry and Administrative Committee. More significant will be a second discussion on

judicial salaries and a first on a new proposed court fee, SME support and recoverable costs

schedule. There is an ambitious timetable to complete the remainder of work of the Preparatory

Committee by the middle of 2016 and a Business Advisor has now been appointed to support the

Chair in his role.

Finally, at the meeting in December there will be a formal appointment of the Chair and Vice Chair

following Paul van Beukering's resignation last month.

Governance: The Project Board are next due to meet on 26 November where they will look at the

Legal planning and follow up on an assurance review of the overall planning considering any

recommendations received.

IT: The technical team have recently visited Luxembourg for their latest workshop where the case

management system was demonstrated. Feedback received from user testing of the CMS and from

recent workshops have resulted in the following updates:

• Support for lists of European Patent Attorneys

• Updates to the Graphic User Interface making it easier to navigate the site

• Capability search for opt-out

• Updates to the Graphic User Interface to distinguish between the different roles

A reminder that you can register here to find out for yourself: http://secure.unified-patent-

court.org/login

11

The team will be giving a demonstration of the system at a morning session in Munich on 2

December. Spaces for this are filling up fast so if you are interested in attending please register

here.

If you would like further details on the IT technical team's progress, providing feedback online and

future case management releases, please sign up for the UPC e-filing/case management mailing list

by following this link: http://eepurl.com/4J609

Facilities: Work continues on the design of Aldgate Tower which we expect to be completed by mid-

December. It is our plan that construction will begin in January and complete in early Spring. At

European level the Facilities working group is meeting next week to discuss how the adopted 18th

draft of the Rules of Procedure will affect how facilities cope with interim procedures, oral hearing

and working with interpreters and translators.

Legal: We're working on finalising the last changes on the Protocol on Privileges and Immunities

ahead of expected adoption at the December Preparatory Committee. We also expect a discussion

of the Rules of Procedure for the Advisory Committee. The rules for arbitration and mediation

continue to be reviewed ahead of their anticipated adoption in December.

HR & Judicial Training: The Working Group continues its focus on the judicial terms and conditions.

The next meeting has been scheduled for 20 November.

Finance: Negotiations on a revised proposal on court fees, recoverable costs and SME support to go

to the Preparatory Committee in December are near conclusion. Comments from the Preparatory

Committee will be reviewed in the New Year and a further proposal will be passed for Agreement at

the February meeting.

The Expert Panel continue their work on the Guidelines to assess case value which will also be

presented to the Preparatory Committee in February.

Unitary Patent: The EPO Select Committee (SC) met on 17 November to continue discussion on

distribution of renewal income, and draft rules relating to fees. The Committee adopted a proposal

on distribution arrangements. It will meet again in December to continue the discussion on rules

relating to fees. The chair of the SC is aiming to finalise the remaining issues around Unitary Patent

Protection by the end of the year.





Janis



www.gov.uk/ipo


12



As most of you know the Intellectual Property Office has been developing the UPC’s case

management system. We’re pleased that the Alpha version of the case management system

has now been released for testing.

It is very important that potential users of the system have the opportunity to look at and

test the system. I encourage you to help shape the way the system looks and feels, and to

provide us with the feedback we need to further develop the system.

Please do register and create an account here: http://secure.unified-patent-court.org/login

To provide feedback please use the 'send feedback' button at the bottom of the web page.

Preparatory Committee: The next meeting of the Preparatory Committee has been

confirmed for 7 and 8 December. The Executive Group will meet ahead of this on 19

November in Brussels to agree the agenda. We expect that the Preparatory Committee’s

work programme will be published with meeting dates which will be helpful in terms of

planning and transparency. I will inform you in a future update when the programme is

available.

An update on the last meeting of the Preparatory Committee, on 19 October, is available

here: http://www.unified-patent-court.org/news/97-95-12th-meeting-of-the-preparatory-

committee-19-october-2015

Governance: The project board met last week on 28 October. The Board discussed the

latest on judicial terms and conditions and the design plans for Aldgate Tower, as well as

reviewing the project risks.

IT: The technical team have just returned from the latest user workshop, demonstrating the

system, which took place in Stockholm. Feedback from users following the session and from

the judges' panel last week in Venice has been incredibly positive. A reminder that you can

register here to find out for yourself: http://secure.unified-patent-court.org/login

A further user workshop in Rome has been scheduled for 10 December.

If you would like further details on the user workshops, the IT technical team's progress,

providing feedback online and future case management releases, please sign up for the UPC

e-filing/case management mailing list by following this link:

http://eepurl.com/4J609

Facilities: The team continue development of the fit out design, working closely with our

design and construction specialists.

13

Legal: The Rules of Procedure, agreed at the last Preparatory Committee meeting, have

been published and are available here: http://www.unified-patent-court.org/news/98-

unified-patent-court-rules-of-procedure

The team continue to review the rules for arbitration and mediation ahead of anticipated

adoption in December.

HR & Judicial Training: The Working Group continues its focus on the judicial terms and

conditions. The next meeting has been scheduled for 20 November.

Finance: Negotiations on court fees, recoverable costs and SME support continue ahead of

a draft schedule being discussed by the Preparatory Committee in December.

There was a meeting last week of the Finance Working Group in Paris where progress was

made on updating existing indicative costs for the Court and on a planned study into

pension arrangements for the UPC.

Unitary Patent: The next meeting of the EPO Select Committee (SC) is on 17 November

where discussion on distribution of renewal income and other financial matters will

continue. The SC chair is aiming to finalise discussion on the financial aspects of the UP by

the end of the year.

Details of EPO meetings are published at http://www.epo.org/about-

us/organisation/calendar.html.

An official Communiqué of the last Select Committee meeting is available on the EPO

website at: http://www.epo.org/about-us/organisation/communiques.html.


Janis

Janis Makarewich-Hall | Deputy Director, Head of UPC Taskforce Intellectual Property Office | 1st Floor | 4 Abbey Orchard Street | London | SW1P 2HT | www.gov.uk/ipo Tel: +44 (0)20 7034 2856 | Mob: +44 (0)7795 665 723 | Email: [email protected]

14

Unified Patent Court Update: 27 October 2015

I am pleased to let you know that today a milestone was reached with the publication of 18th Draft

of the Rules of Procedure (ROP) of the Unified Patent Court. (http://www.unified-patent-

court.org/news)

These rules outline how the Court will operate and form a key part of the training

programme for the Judges representing the UPC. The publication follows a rigorous process of development and collaboration between the

Preparatory Committee's Legal working group and the Drafting Committee which underpins

the Court's framework and functioning. The work has benefitted tremendously from

comments from stakeholders submitted during the written consultation and the oral

hearing and we would like to thank you all for your input so far. It is expected that there may be technical amendments to allow for the addition of

outstanding rules (for example: court fees/mediation and arbitration) before formal

adoption by the Administrative Committee. As always, please feel free to forward this note to anybody who may find it useful. Janis


15



Preparatory Committee: The Preparatory Committee met yesterday on 19 October. The

agenda included discussion of the Privileges and Immunities Protocol, which is hoped will be

concluded shortly, a summary of the court fee consultations, and a further discussion of the

rules on mediation and arbitration.

The Preparatory Committee formally adopted the Rules of Procedure, subject to inclusion of

the fees rules and any technical amendments that might be needed, which once concluded,

will be published on the UPC website. I will let you know in a future update once they are

available. A special thank you to Kevin Mooney who chaired the expert drafting committee

and pulled this all together.

The next meeting of the Preparatory Committee was confirmed for 7 and 8 December. The

agenda will focus on the HR and Judicial Training work program and is anticipated to include

judicial salaries & allowances for agreement, services regulations, recruitment process and

admin staff for discussion.

The Chair Paul van Beukering also announced that he was stepping down from the

Committee. This is for personal reasons and he made a proposal to the Committee that

Alexander Ramsay continue as acting-Chair until it is confirmed by members at their

December meeting. A vice-chair will also be confirmed in December.

Governance: The Project Board meet next on Wednesday 28 October. The IT, Finance and

Facilities Sub-groups all met in the last fortnight.

IT: The technical team are currently in Bologna working with the case management system

suppliers, Net Service, preparing the system for the mock trial and demonstration at the

Judges’ Panel in Venice later this week.

The team and the suppliers will attend the panel; delivering a number of presentations and

demonstrations of the system along with providing the system for use during the mock trial

and for the judiciary to user test and provide live feedback to the suppliers.

A further user workshop in the Netherlands has been scheduled. If you would like further

details on the user workshops, the IT technical team's progress, providing feedback online

and future case management releases, please sign up for the UPC e-filing/case management

mailing list by following this link:


Facilities: We continue our work with design specialists on the fit out design for the London

location for the court.

16

We attended the Facilities Working Group teleconference last week, on Thursday 8 October.

The meeting began discussions on preferred arrangements for some procedural issues - in

particular interpretation and translation arrangements and how to assure a common

standard.

Legal: The team have been busy reviewing the latest draft of the Rules of Procedure, in the

lead up to their adoption at yesterday’s Preparatory Committee. The team have also begun

analysis of the rules for arbitration and mediation ahead of anticipated adoption in

December.

Preparations for laying legislation to amend the Patents Act are going well and I hope to be

able to give more news on the legislative timetable soon.

HR & Judicial Training: The HR Working Group is meeting today, Tuesday 20 October in

Brussels. The meeting’s focus is on the judicial salary package and remuneration, which is

anticipated to be tabled for a first discussion at the December Preparatory Committee.

Finance: Negotiations on the court fees continue with a meeting taking place in London last

week on Thursday 15 October and two further meetings planned. This is in preparation for

a revised a revised fee structure for substantive discussion at the December Preparatory

Committee.

The Finance Working Group meets next on 28 October. The agenda includes court fees, tax

and social security, finance systems and case volume.

Research: We have begun a new case counting exercise to count the number of patents

cases for 2014. After a competitive tendering exercise the contract was awarded to Powell

Gilbert. Amongst other things, data from this exercise will be used to determine the UK's

financial contributions for the Court.

Unitary Patent: The EPO Select Committee met last week on 13 and 14 October. Discussions

focused on the proposed distribution key for the Unitary Patent. The Committee also gave

an opinion on the draft Rules relating to Fees for Unitary Patent Protection.

It is intended to present both items for decision at the next meeting of the Select

Committee on the 17 November.

Details of EPO meetings are published at http://www.epo.org/about-

us/organisation/calendar.html.


website at: http://www.epo.org/about-us/organisation/communiques.html.


18


Here is the latest on the UPC. Preparatory Committee: In the margins of the Competitiveness Council meeting yesterday

a major step was taken towards bringing the Unified Patent Court into operation when the

Provisional Application Protocol was signed. Our Minister Baroness Neville-Rolfe attended

to sign on behalf of the UK.

The UPC Preparatory Committee also announced a commitment to conclude all preparatory

work by June 2016 with the court opening for business at the start of 2017. The announcement can be found in full on the UPC here: http://www.unified-patent-

court.org/news. The next Preparatory Committee meeting is on 19 October. The agenda includes agreement

on the Privileges and Immunities Protocol, adoption of the Rules of Procedure, a summary

of the court fee consultations and a further discussion of the rules on mediation and

arbitration. Governance: The Project Board met on Wednesday 30 September. The Board discussed the

court fee consultation and discussed project risks. The Steering Board also met on Wednesday. The agenda included an update on the fees

work, a look at the Preparatory Committee’s work program for the coming months and

discussion on meditation and arbitration. IT: The technical team have just returned from Berlin after meeting with the registrar's

group to answer their questions and better understand their expectations.

19

Initial feedback of the Case Management System is encouraging and very positive with the

first user workshop and a presentation to the Expert Panel (demonstrating the system) have

been completed. We hope to give public access to a beta system soon. We also continue to work on options for processing payments through the CMS system If you would be interested in further information on the IT technical team's progress,

providing feedback online, future case management releases, including the user workshops,

please sign up for the UPC e-filing/case management mailing list by following this link: http://eepurl.com/4J609 Facilities: We continue to work with suppliers on finalising the design for the fit-out of the

London court. An article of the recent UPC event is available on the IPO website here: https://www.gov.uk/government/news/intellectual-property-minister-hosts-reception-at-

aldgate-tower Legal: The team have been busy preparing for the signing of the Provisional Application

Protocol. HR & Judicial Training: The HR working Group met on Tuesday in Brussels. The group

worked through the latest version of the staff regulations. Good progress was made and the

group remain on course to provide a final draft of the regulations to the Preparatory

Committee in December. The coordination of the Working Group is moving from Oliver

Varhelyi to Gyorgy Kozma. Discussions on judicial remuneration are expected to be

completed by the end of the year. Finance: The Court Fees Sub-group has begun to discuss in earnest the various points raised

during the consultation. A teleconference was held early this week and regular meetings

are scheduled between now and the end of October. Amongst the Sub-Group's

considerations are various points raised by the Expert Panel both at their meeting on 18

September and in subsequent written comments. Unitary Patent: The next meeting of the EPO Select Committee will take place on 13 and 14

October. Details of EPO meetings are published at http://www.epo.org/about-

us/organisation/calendar.html. An official Communiqué of the last Select Committee meeting is available on the EPO

website at: http://www.epo.org/about-us/organisation/communiques.html. As always, please feel free to forward this note to anybody who may find it useful.

20

Janis


21

Unified Patent Court Update: 17 September 2015

Here is the latest on the UPC. Preparatory Committee: There is an Executive Group meet tomorrow morning to discuss

the Privileges & Immunities Protocol and to confirm the agenda for the 12th meeting of the

Preparatory Committee, scheduled for 19 October. In the afternoon the Expert Panel will have their third meeting where they will have a

presentation of the Case Management System from the IT Working Group. There will also

be a discussion on the summary of responses following the court fee consultation with

members of the Joint Fee Sub-group and a brief discussion on emerging proposals on a Code

of Conduct being developed for representatives with business professionals including

EPLAW, EPLIT and epi. This is at an early stage and I will share more information as I receive

it. Governance: The Project Board’s next meeting is on Wednesday 30 September. The four sub-groups of the Project Board all met in the last week. IT: Wednesday 9 September saw us kick off the Case Management System roadshow with

the first workshop/demonstration in London. This was hosted by Allen & Overy to who we

extend our thanks for their support and help in setting this up. Attendees were given an overview of the UPC and some background history on the work

carried out on the prototype in 2014. This was quickly followed by a demonstration of the

opt-out and withdrawal opt-out forms. A suggestion was for us to provide a roadmap of features and forms being introduced into

the system; which we are now working on and, once available, will send out to everyone

who has subscribed to the UPC mailing list. The workshops continue and If you would be interested in further information on the IT

technical team's progress, providing feedback online, future case management releases,

including the user workshops, please sign up for the UPC e-filing/case management mailing

list by following this link: http://eepurl.com/4J609

22

Facilities:

As announced in a recent update, the IPO has signed a lease for space in Aldgate Tower to

host the UPC in London https://www.gov.uk/government/news/upc-london-location Securing this building has been a great step towards bringing the UPC into effect, ensuring

the success of the Court and the UK’s involvement. To recognise achieving this significant

milestone, our Minister Baroness Neville-Rolfe, hosted a small reception at Aldgate Tower. The reception was an opportunity for the Minister to thank some of the people who have

been extremely generous with their time; both helping and advising the IPO during the

process of selecting the facility for the court in London, and offering their wider support to

the IPO on UPC issues. Further detail of the event will be available in an article on the IPO website expected to be

published tomorrow: https://www.gov.uk/government/organisations/intellectual-property-

office Legal: The European Patent Litigators Certificate (EPLC), agreed at the recent Preparatory

Committee, has been published and is available here: http://www.unified-patent-court.org/news/95-draft-proposal-for-rules-on-the-european-

patent-litigation-certificate-and-other-appropriate-qualifications-3-september-2015 Discussions on the Protocol for Provisional Application have been concluded and

preparations are now underway for formal signing in early October. HR & Judicial Training: Training of potential future judges continues.

23

The next HR working group has been confirmed for 28 September and will focus on a

revised draft of the staff regulations. Finance: Last week we attended a very good meeting of the Court Fees Sub-group in

Stockholm. An extensive summary and list of key points from the consultation were

discussed and agreed. These drafts will now be discussed more widely, including at the

Expert Panel meeting tomorrow and at next Preparatory Committee. The Group will then

work through the various suggestions and look to revise as necessary. Unitary Patent: The meeting of the EPO select committee that was scheduled for

September has been postponed. It will now take place on 13 and 14 October. This should

enable Italy, who have submitted a requested to join the Unitary Patent system, to

participate as a full member in the remaining discussions within the select committee. Details of EPO meetings are published at http://www.epo.org/about-

us/organisation/calendar.html. An official Communiqué of the last Select Committee

meeting is available on the EPO website at: http://www.epo.org/about-

us/organisation/communiques.html. As always, please feel free to forward this note to anybody who may find it useful. Janis


24



Preparatory Committee: The Preparatory Committee held its 11th meeting yesterday

Thursday 3 September.

The Provisional Application Protocol was discussed and agreed and we expect to be in a

position to sign this in October. There was a long discussion about the timetable and the

outstanding milestones to be met ahead of the court coming into being. We expect a

formal announcement on timing in October.

The date for the next Preparatory Committee meeting has been rescheduled to 19 October

following a clash with the Select Committee meeting. Once details of the agenda are

announced I will let you know. The Expert Panel will have their third meeting in Paris on

the 18 September.

Governance: The Project Board’s next meeting is on Wednesday 30 September.

The four sub-groups of the Project Board will all meet in the next fortnight.

IT: The technical team have just returned from Net Service's offices in Bologna following

extensive planning and preparation of the case management system ahead of the first user

workshops in London on 9 September. We will be going through step-by-step the alpha of

the opt-out process during these workshops and are keen to engage with potential users of

the system and receive feedback on how it works.

There will also be an opportunity soon to provide feedback online, similar to the prototype

that ran last year. I will update you on this once it is ready.

If you would be interested in further information on the IT technical team's progress,

providing feedback online, future case management releases, including the user workshops,

please sign up for the UPC e-filing/case management mailing list by following this link:


Facilities: As announced in our last update, the IPO has signed a lease for space in Aldgate

Tower to host the UPC in London https://www.gov.uk/government/news/upc-london-location

Design and build contractors have been appointed and a series of design workshops have

been held (and will continue throughout this month) looking at the design for the floor plan

ensuring we are meeting regulatory requirements. This is also where we need to ensure we

have the proper infrastructure in place for the court systems to work. A project team has

been pulled together to deliver this work.

25

Legal: The European Patent Litigators Certificate (EPLC) was agreed at yesterday’s

Preparatory Committee meeting and will be published shortly on the UPC website:

http://www.unified-patent-court.org/news

HR & Judicial Training: The team continue to negotiate on the judicial salary package with

the Working Group and other member states; they are currently analysing methods of

judicial part-time working to ensure that the UPC judicial cadre is appropriately

remunerated and fully utilised.

The staff terms and conditions have been revised to reflect discussion at the last HR working

group, member states including the UK have commented on this revised draft for discussion

at the next HR working group, which is anticipated to take place at the end of September.

Finance: We have been working through the Court Fees Consultation responses over the

summer, following the consultation closing at the end of July. This feeds into the next

meeting of the joint Fees Sub-group, on 10 September in Stockholm, which will agree the

summary to be provided to the Preparatory Committee in October. The Expert Panel will

also discuss this at their meeting on 18 September.

Unitary Patent : The EPO Select Committee meets next on 13 and 14 October

(http://www.epo.org/about-us/organisation/calendar.html) continuing discussions on the

remaining details relating to the Unitary Patent.


website at: http://www.epo.org/about-us/organisation/communiques.html


Janis


Intellectual Property Office | 1st Floor | 4 Abbey Orchard Street | London | SW1P 2HT | www.gov.uk/ipo


26

Unified Patent Court Update: 11 August 2015

I wanted to draw your attention to the announcement today on the London location of the

Unified Patent Court. https://www.gov.uk/government/news/upc-london-location

I am pleased to tell you that we signed a lease today

for the 8th floor of Aldgate Tower. Aldgate Tower

represents a good value location within Central

London on the edge of the City and close to the legal

district, with excellent transport links (domestically

and internationally). As this is a new building the

space we have secured offers us flexibility allowing a

modern and functional fit-out. Building work is

expected to begin later in the year, and the facility is

due to be completed before Spring 2016. Baroness Neville-Rolfe says: "The signing of this lease represents a milestone in the

UK’s preparations for the introduction of the Unified

Patent Court. Aldgate Tower, with its superb central

location, will provide an ideal home for a modern court

to support the UK’s and Europe’s leading edge

innovative companies. This will further strengthen UK’s

legal and professional services sector, and reinforce

London’s status as a world leading centre for dispute

resolution." Further information about Aldgate Tower can be found here: http://www.aldgatetower.com/ As always, please feel free to forward this note to anybody who may find it useful. Janis

Janis Makarewich-Hall | Deputy Director, Head of UPC Taskforce Intellectual Property Office | 1

st Floor | 4 Abbey Orchard Street | London | SW1P 2HT | www.gov.uk/ipo


27

Unified Patent Court Update: 16 July 2015


This will be my last update until early September as Europe tends to be quieter in this period

allowing people, including members of the Taskforce, to take much needed breaks.

UPC Consultation on the Rules on Court Fees

The Preparatory Committee's consultation on court fees remains open until the 31st of July.

It can be found on the Preparatory Committee's website (http://www.unified-patent-

court.org/consultations). I would encourage you and your organisations to respond and

make your views known. Preparatory Committee: The Preparatory Committee met Friday 10 July. The 18th draft of

the Rules of Procedure was discussed and we expect it to return to the October meeting for

agreement. There was widespread praise for the work done to get it to this stage.

The Protocol for Privileges & Immunities and the operating costs of the court were

discussed and will return in October.

There was agreement for an MOU with the ISRP to provide their service for pensions and

social security to the court.

The Provisional Application timetable was discussed and will return to a meeting in early

September for agreement along with the staff regulations which are back with the HR &

Judicial Training Working Group to finalise ahead of the meeting.

The date for the meeting in October has been confirmed for 13 October.

Governance: The Project Board meet next on Wednesday 29 July. The Board will have a

status report from the HR and Training and Facilities workstreams and an initial planning

discussion for a review of the project governance in the autumn.

The Sub-groups of the Project Board all met this week.

IT: The initial kick off meetings with the successful suppliers took place last week and work

is now underway. Our technical lead is now out in Italy with the case management system

suppliers confirming the detail of the initial planning work.

One of the priorities within the case management system is the opt-out process and this will

be the first form to be addressed. Alongside this investigations are underway to provide an

interim payment provider until the court has its legal entity and a functional finance system.

To assist us with this a specialist financial solutions architect has joined the team for three

months.

The team, along with the case management system supplier, are meeting with the EPO

technical team next week to further discuss requirements for the technical process of the

opt-out.

28

A number of user workshops over the autumn and across Europe have been confirmed. The

workshops are aimed at refining requirements and testing the CMS.

To sign up for the event in London and for further details on the other events please follow

this link:

http://www.eventbrite.com/e/upc-user-workshop-london-tickets-16861134106?aff=mcivte

Facilities: The team have been giving further consideration to the optimum specification

level for the facility.

Legal: The Legal Sub-group met earlier this afternoon. Discussion focussed on the 18th Draft

of the Rules of Procedure which we expect to be adopted at the October Preparatory

Committee.

The EPLC is still to be agreed and I will inform you once it is published on the UPC website.

HR & Judicial Training: The team are reviewing the new draft of the staff terms and

conditions following their return to the Working Group.

Sweden made a proposal at Preparatory Committee to use an online recruitment tool which

is now with the HR and Training Working Group to consider.

Finance: On Monday 6 July, Burness Paull kindly hosted our second event on the Court Fees

consultation, this time in Edinburgh. The topics covered in the presentations were the same

as the earlier event in London, but it was interesting to note that many of the issues raised

in the Q & A discussions were different. Amongst these issues were the option of a "pay as

you go" system rather than reimbursements (as suggested in Alternative 1), comparisons to

the German value based fee system and the complexity of the Application to determine

damages. Compromises for SME support and the impact of the fee structure on non

practicing entities were also raised, as they were in London. We are very grateful to our

hosts, speakers and participants for their contributions to providing us with further

invaluable insight on what to expect in the consultation responses.

Unitary Patent: The EPO Select Committee meets again on 16 and 17 September to

continue discussions on the remaining details relating to the Unitary Patent.




Janis


29

Unified Patent Court Update: 2 July 2015



The Preparatory Committee's consultation on court fees remains open until the 31st of July.

It can be found on the Preparatory Committee's website (http://www.unified-patent-

court.org/consultations). We, along with CIPA and the IP Federation, are hosting an awareness raising event in

Scotland on Monday 6th July at 4:30pm at the Burness Paull offices in Edinburgh:

https://www.gov.uk/government/news/scotland-event-for-the-upc-court-fees-consultation

There’s still time to join and if you would like to attend please follow this link and RSVP:

I would like to go to the event in Edinburgh;

I look forward to seeing those attending there.

Preparatory Committee: The next meeting of the Preparatory Committee is on Friday 10

July. The agenda has been issued and a key topic for adoption is the provisional application

proposal and its timetable. If this is adopted I will give you more details of the timetable in

my next update. The agenda will also cover the protocol on privileges and immunities,

specifically to discuss the legal text necessary for any changes needed in domestic laws.

There will also be a report from the HR & Training co-ordinator on the progress to date on

the work around judicial salaries and terms and conditions.

Governance: The Project Board met this week on Wednesday 1 July. Ahead of the

Preparatory Committee the Board discussed judicial remuneration and received a status

report on the IT workstream, more details of this work can be found below.

IT: The ITT evaluations are complete and the successful suppliers (subject to contract

signing) are Net Service for the Case Management System (CMS), Miggle for the Website

and T-Systems for the Hosting. The team met with Net Service and T-Systems this week to

discuss the plans for the CMS over coming months and will meet with Miggle and T-Systems

next week to do the same on the website.

A number of user workshops over the autumn and across Europe have been confirmed. The

workshops are aimed at refining requirements and testing the CMS.

To sign up for the event in London and for further details on the other events please follow

this link:

http://www.eventbrite.com/e/upc-user-workshop-london-tickets-16861134106?aff=mcivte

Facilities: The Preparatory Committee will be considering and hopefully agreeing elements

of facilities operational functions that will be the responsibility of Member States or of the

30

UPC itself. This is important in defining what the UPC will be responsible for and what

Member States will be expected to provide.

Legal: We attended a meeting last week in Berlin on the Rules of Procedure. The meeting

was successful with progress made moving towards agreeing the Rules later this year.

The EPLC (European Patent Litigation Certificate) is current out for adoption via written

procedure soon and should it be acceptable to all I would expect something will be

published on the UPC website later this month. I hope to be able to include more detail in

my next update.

HR & Judicial Training: The HR and Judicial Training Working Group met on 22 June.

Discussion focussed on regulations governing the condition of service of judges, the

registrar and the deputy-registrar with good progress made towards finalising these. The

group also confirmed that the ISRP are to report on pensions and social security on potential

provisions. A sub-group tasked with identifying and defining roles has been established to

enable the court to be established. The use of an online tool to handle judicial applications

was agreed.

Finance: We were pleased to welcome participants both in person and via the Webinar at

our joint UPC fees consultation event with CIPA and IPFed and kindly hosted by Allen and

Overy on 23 June. Guest speakers gave short introductions on key topics and then answered

an array of questions. The questions covered issues such as compromises for SME support,

the appropriateness of certain fees, the impact of the fee structure on non practicing

entities and what costs are covered under the recoverable costs ceiling. A video of the event

remains on line and can be accessed here:

http://responsive.policyreview.tv/conference/1036.html. We found the event extremely helpful in

understanding the issues most likely to come out in written responses and look forward to

reading them in due course.

Unitary Patent: The Select Committee held its 15th meeting in Munich on 23 and 24 June

2015. The Committee took a preliminary decision in support of a True Top 4 fee level for the

Unitary Patent. This fee level corresponds to the equivalent of the renewal fees which have

to be paid for the four countries out of the twenty-five EU participating member states in

which European patents are currently most often validated. This fee level was considered

attractive for business and in particular for SMEs.

The UK supported the preliminary decision on Top 4 following confirmation by the EPO

President that it would be fully consistent with the requirement to provide a balanced

budget and his commitment to complete a broad review of the financial situation of the

Office by 2016. The proposal includes a fee review clause which will enable the committee

to adjust the fee level if assumptions around uptake and cost coverage prove incorrect.

Work on the distribution key and other remaining issues will continue in September.

A report of the recent select committee meeting is available at: http://www.epo.org/about-

us/organisation/communiques.html#a16

31


Janis


32

Unified Patent Court Update: 19 June 2015



The Preparatory Committee's consultation on court fees is now open until the 31st of July. It

can be found on the Preparatory Committee's website (http://www.unified-patent-

court.org/consultations)

We, along with CIPA and the IP Federation, are hosting a series awareness raising events for

individuals and businesses to gain a better understanding of the background of the

consultation, the details of the various elements contained within it and how best to get

your views across.

The London event will take place on the 23rd June 2015 from 18:00-19:30 at the Allen and

Overy Offices (Allen and Overy LLP, One Bishops Square, London, E1 6AD).

If you would like to attend the event please RSVP to Tina Alexander at Allen and Overy.

([email protected]) The London event will also host a live and interactive webinar. If you would like to join the

webinar please follow this link:

http://responsive.policyreview.tv/conference/1036.html

There will also be an event in Scotland on the 6th July in Edinburgh, at 4:30pm at the

Burness Paull offices:

https://www.gov.uk/government/news/scotland-event-for-the-upc-court-fees-consultation

If you would like to attend please follow this link and RSVP:

I would like to go to the event in Edinburgh;

I look forward to seeing you at one of the events.

Preparatory Committee: The Preparatory Committee meet next on 10 July. The agenda will

include both protocols, on privileges and immunities and provisional application, and a

progress report on judicial remuneration.

A question on the opt-out FAQ on the UPC website has been updated:

http://www.unified-patent-court.org/about-the-upc/17-category-d/94-does-an-opt-out-

under-article-83-3-upca-affect-only-the-exclusivity-of-jurisdiction-so-that-the-upc-in-fact-

retains-a-non-exclusive-jurisdiction-with-regard-to-the-opted-out-patent

Governance: The Project Board meet next on 1 July. The agenda includes judicial

remuneration and a progress update on the IT workstream, summarising the tender process

and outlining the plans for the configuration phase.

33

The Sub-groups of the Project Board all met this week.

IT: The ITT evaluations are complete and the suppliers have been notified of the result. We

are now in a mandatory period of standstill. I will inform you of the results, in a future

update, following the end of the standstill period. The UPC website will also publish the

results.

Workshops with users have been confirmed for the autumn in the UK and across Europe.

The workshops are aimed at refining requirements and testing the Case Management

System. Further details on the workshops will be publicised shortly and will be included in

an update soon.

If you would be interested in further information on these workshops please sign up for the

UPC e-filing / case management prototype mailing list by following this link:


Facilities: The Taskforce, along with IT infrastructure specialists, are arranging to visit a UK

digital magistrates' court in Manchester soon. The visit will be an opportunity to see an

established digital court and to learn from its procedures and experience.

Legal: Members of the Taskforce are attending the Legal Frameworks Working Group

meeting on the Rules of Procedure, next week on 25 and 26 June. This is ahead of the Rules

going to the Preparatory Committee meeting on 10 July.

The team also continue working on the EPLC (European Patent Litigation Certificate) with

the Working Group co-ordinator which remain on course to be adopted via written

procedure before the summer break.

HR & Training: We are attending the HR & Training Working Group meeting on Monday, 22

June, in Brussels. The agenda includes the final draft of the terms and conditions for non-

judicial staff, progress on judicial training and the training framework, the framework for

part time working and the continuing work on judicial remuneration.

Finance: The team remain focused on the consultation and organising the awareness

raising events. The team have also been discussing reviewing the indicative costings,

assumptions and working with HR colleagues on remuneration.

Unitary Patent: The Select Committee meets next Tuesday and Wednesday, 23 and 24

June, to continue discussions on the level of renewal fees and the distribution key

arrangements.



Research: Understanding pre-reform behaviour: Unitary Patent and Unified Patent Court is

a Knowledge Exchange* project part funded by the Economic and Social Research Council

and the UK Intellectual Property Office (IPO) in collaboration with Queen Mary University,

34

Newcastle University, University of East Anglia, Max Planck Institute for Innovation and

Competition (MPI IC) and the Centre for European Economic Research (ZEW). The objective

of the project is to establish a baseline for future evaluations of the Unitary Patent and

Unified Patent Court. IPO and the research team are in the early process of the research –

consulting industry experts, defining methodologies and collecting data.

If you would like to know more about the research, please contact

[email protected].

* http://www.esrc.ac.uk/collaboration/knowledge-exchange


Janis


35

Unified Patent Court Update: 5 June 2015

Here is the latest on the UPC. UPC Consultation on the Rules on Court Fees The Preparatory Committee's consultation on court fees is now open until the 31st of July. It

can be found on the Preparatory Committee's website (http://www.unified-patent-

court.org/consultations) We, along with CIPA and the IP Federation, are hosting a series awareness raising events for

individuals and businesses to gain a better understanding of the background of the consultation, the

details of the various elements contained within it and how best to get your views across.

The London event will take place on the 23rd June 2015 from 18:00-19:30 at the Allen and

Overy Offices (Allen and Overy LLP, One Bishops Square, London, E1 6AD). If you would like to attend the event please RSVP to Tina Alexander at Allen and Overy.

([email protected])

The London event will also host a live and interactive webinar. Details of how to join this will be

publicised shortly.

There will also be an event in Scotland on the 6th July in Edinburgh. Please follow the link below to

express you interest in attending the event:

I would like to go to an event in Scotland; We continue to gauge interest for a further event in either Manchester or Leeds. If you are

interested please click one of the links below for your preferred location I would like to go to an event in Manchester; I would like to go to an event in Leeds; I look forward to seeing you at one of the events. Preparatory Committee: The Executive Group met in Luxembourg on Tuesday 2 June 2015.

The meeting focused on the corporate functions the court will need and confirming the

agenda for the next Preparatory Committee, which will take place on 10 July. On corporate functions, a good level of discussion was had and agreement was reached on

taking a number of work packages forwards. The HR & Training Working Group was tasked

with drafting detailed job specifications for the corporate staff of the court. A group will also

form, made up of Financial Aspects and HR & Training Working Group members, to work on

pensions and social security with the ISRP. The Executive Group also discussed staff

regulations and requirements and the costs of the hosting a local division.

36

Whilst in Luxembourg members of the Taskforce took the opportunity to visit the Court of

Appeal location which is currently being refurbished. The agenda for the next Preparatory Committee was confirmed and will include both

protocols, on privileges and immunities and provisional application, and judicial

remuneration. Forward look of UPC Preparatory Committee Dates: 10 July Preparatory Committee 18 September Expert Panel Meeting in Paris 13 October Preparatory Committee Governance: The Project Board meet last on 27 May. The Sub-groups of the Project Board

all meet next on the week commencing the 15 June. IT: The OJEU Tender process to identify suppliers for the Case Management System,

website and hosting solution for the Court is nearing an end. The final demonstrations of

the CMS platforms have taken place and we are part way through the consensus meetings

which will conclude next week. We anticipate notifying suppliers of the outcomes once

agreement has been reached and this will be followed by a mandatory standstill period,

before work on configuring the solutions can begin. The team have also visited the EPO in Munich to discuss handover of the Opt-Out process. Workshops with users have been confirmed for the Autumn in the UK and across Europe.

The workshops are aimed at refining requirements and testing the Case Management

System. If you would be interested in further information on these workshops please sign up for the

UPC e-filing / case management prototype mailing list by following this link: http://eepurl.com/4J609 Facilities: We are engaging with other Member States on developing an operating model

for the UPC, and how this will influence required staff in the Court and at national facilities

and the tasks and skills they will need for specific roles. We are also looking in more detail at

IT requirements within the UK facility. The Facilities Working Group met via teleconference last week, Friday 29 May, and

discussed security requirements for the court locations. Legal: We have received amendments to the court rules of procedure, ahead of the Legal

Frameworks Working Group meeting on 25 and 26 June, aimed at concluding Working

Group discussion on the rules. This is anticipated to be the last discussion of the rules of

procedure with the rules tabled on the agenda for adoption at the 10 July Preparatory

Committee meeting.

37

The Team continues to liaise with the Working Group Co-ordinator on the EPLC (European

Patent Litigation Certificate) and fully anticipate them to be adopted via written procedure

in the next few weeks. HR & Training: The next meeting of the HR & Training Working Group has been set for 22

June. The agenda includes agreeing the final draft of the terms and conditions for non-

judicial staff, ahead of seeking final agreement at Preparatory Committee. Also for

discussion on the agenda will be progress on judicial training and the training framework

and the framework for part time working and the continuing work on judicial remuneration. Finance: The team remain focused on the UPC consultation and the awareness raising

events. A reminder that the consultation closes on 31 July and the consultation document is

available here: http://www.unified-patent-court.org/ Unitary Patent: The 14th meeting of the Select Committee took place on 26 and 27 May.

The committee considered a proposal from the EPO on the level of renewal fees and

continued its discussion on the distribution key arrangements. It also exchanged initial views

on draft rules relating to the fees for Unitary Patent protection. The committee will meet

again on 23 June. An official Communiqué of the 14th Select Committee meeting is available on the EPO

website at: http://www.epo.org/about-us/organisation/communiques.html As always, please feel free to forward this note to anybody who may find it useful. Janis


38

Unified Patent Court Update: 8 May 2015 Here is the latest on the UPC.

Preparatory Committee: The Preparatory Committee met on Tuesday 5 May. The meeting

was productive with progress made in a number of key areas. A note is available on the UPC

Preparatory Committee website here:

http://www.unified-patent-court.org/news/90-9th-meeting-of-the-preparatory-committee-

5-may-2015

The UPC Consultation on the Rules on Court fees and recoverable costs was agreed and has

been published on the UPC Preparatory Committee website. The consultation document is

available here:

http://www.unified-patent-court.org/consultations

Luxembourg and Portugal are expected to ratify soon. You can keep track of the ratifications

here:

http://www.consilium.europa.eu/en/documents-publications/agreements-

conventions/agreement/?aid=2013001

The European Patent Litigation Certificate was discussed but not adopted. Those with

outstanding issues, including the UK, will be working directly with the drafting group to

resolve these. We anticipate this to be agreed via the written procedure route and I will let

you know when that has been completed, hopefully over the next few weeks.

The financial regulations were agreed by written procedure ahead of the meeting.

Governance: The Project Board met last week on 29 April, reviewing the work programme

for the next six months and the Facilities Workstream’s progress.

The Finance, IT and Legal Sub-groups all meet next week.

IT: The IT evaluation team are now scheduling the supplier demonstrations, which will take

place throughout May. These demonstrations will be a chance for suppliers to show off their

platforms to the team and clarify any questions they may have on the platforms and tender

responses.

The team are also planning a number of workshops for after the summer with users aimed

at refining requirements. If you would be interested in further information on these

workshops please sign up for the UPC e-filing / case management prototype mailing list by

following this link: http://eepurl.com/4J609

Facilities: The IT and Facilities Working Groups held a joint meeting on 21-22 April in the

German Patent and Trademark Office and the Federal Patent Court in Munich. Issues

39

discussed included the standard of internet connections hosting States would need and the

impact for hosting States' staffing requirements of the UPC's operating model. The

discussions will feed into Preparatory Committee work on the UPC operating model and

how its corporate functions will be managed.

Legal: The judgement in Spain's challenge to the unitary patent regulation has been

published, with the court dismissing both cases.

Notification of the judgement on cases C-146/13 and C-147/13 is available from the CJEU

website at:

http://curia.europa.eu/jcms/jcms/Jo1_6581/?dateDebut=4/5/2015&dateFin=10/5/2015

The Rules of Procedure will be discussed at a dedicated meeting, on 25 and 26 June, of the

Expert Drafting Group and the Legal Frameworks Working Group members. A revised

version is expected to come to the 10 July Preparatory Committee meeting.

We continue working on two proposed protocols for provisional application and privileges &

immunities.

HR & Training: The second full week of training for legally qualified judges was successful

and the training program is progressing well.

A joint meeting of the Financial Aspects and HR & Training Working Groups focused on

furthering discussion on the judicial package has been scheduled for 21 May in Paris.

Finance: The team, working with CIPA and the IP Federation, are planning a number of

events, aimed at raising awareness of the Preparatory Committee’s consultation on the

Rules on Court fees and recoverable costs.

The Finance Sub-group will focus on forward planning and preparing for the 21 May meeting

on the judicial package.

Unitary Patent: Discussion on Unitary Patent renewal fees continues within the EPO Select

Committee. The next meeting has been scheduled for 26 and 27 May. An official

Communiqué of the 13th Select Committee meeting is available on the EPO website at:


I hope to be able to update you further following the conclusion of these meetings.


Janis


40

Unified Patent Court Update: 17 April 2015

As mentioned in the last update we are now in the period of Purdah which means we’ll be

quieter until after the general election and the formation of a new government. We have

rules that ensure our impartiality during the election period, by which we must abide, that

mean we are restricted about speaking in public and formal engagement but, as always, if

you have anything you wish to discuss then please contact me or other members of the

Taskforce.


Preparatory Committee: The Executive Group meets again on 24 April. The meeting will

focus on the necessary steps for the provisional application phase. The next Preparatory

Committee meeting is on 5 May and is expected to agree the launch of the fee consultation

and adopt the Rules on the European Patent Litigation Certificate In a future update I hope

to be able to give you more information on the next steps for the Certificate once it has

been adopted.

Governance: The Project Board meet next on 29 April. The Board will review their work

programme for the next six months and discuss progress on the property search of the

London division.

The Finance, IT and Legal Sub-groups all met this week. More details on their agendas are

set out below.

IT: We have finished our clarification meetings with the ITT suppliers. We are now

answering a few final questions as we near the end of the ITT phase and move towards the

evaluations.

At this week’s IT Sub-group discussions covered an update on planning, the technical

process for the opt-out and how best to test and demonstrate the case management system

at the forthcoming mock trial in the autumn. The team will feed proposals to the HR &

Judicial Training Working Group who will be organising this.

Facilities: To begin preparing for the design and fit-out of the eventual London facility we

are sourcing expertise from HM Courts and Tribunal Service colleagues and have had a

detailed planning meeting bringing in IPO specialists on estates, ICT infrastructure,

procurement and finance. A joint meeting of the IT and Facilities working groups will take

place next week in Munich.

Legal: The judgement in Spain's challenge to the unitary patent Regulation is expected on 5

May. Notification of the judgement on cases C-146/13 and C-147/13 is available from the

CJEU website at:

http://curia.europa.eu/jcms/jcms/Jo1_6581/?dateDebut=4/5/2015&dateFin=10/5/2015

41

At this week’s legal sub-group discussion focussed on plans for privileges and immunities

and addressing legislative consideration for the Isle of Man.

Finance: The Financial Aspects Working Group met last week. The financial regulations

were approved and now in the process of being agreed via written procedure by the

Preparatory Committee. The meeting also furthered progress on the fee framework

consultation, which will be passed to the Preparatory Committee for agreement in early

May. If agreed the consultation will be published later that month.

Discussions at the Finance Sub-group on Monday focused on Financial Regulations, the fee

framework consultation, and the impact of the judicial package on the budget.

HR & Training: The team continue to consider the judicial remuneration package whilst we

wait for the outcomes of discussions at the next Preparatory Committee. The second full

week of training for legally qualified judges takes place next week at the UPC training centre

in Budapest.

Unitary Patent: Discussion on Unitary Patent renewal fees continues within the EPO Select

Committee. The next meeting has been scheduled for 26 and 27 May. An official

Communiqué of the 13th Select Committee meeting is available on the EPO website at:



Janis



www.gov.uk/ipo

T: +44 (0)20 7034 2856 | M: +44 (0)7795 665 723 | E: [email protected]

42



Preparatory Committee: The next Preparatory Committee meeting will take place on 5 May 2015.

Ahead of that the Chairman has called two separate meetings of all Working Group Co-ordinators;

the first of which will take place before the end of March and the second one in April. This is a

necessary step to ensure all business is covered over this busy period. In addition to the preparation

of the court fee structure consultation, work has now begun on the structure and operating model

of the court and also on judicial salaries.

For those still interested, I would like to remind you that a full recording of the oral hearing from last

November on the draft Rules of Procedure is still available:

http://www.unified-patent-court.org/2-uncategorised/88-auto-generate-from-title

Governance: The Project Board meets next week on 25 March. The Board will discuss progress on

the judicial package and the upcoming fees consultation. The usual review of top risks will also be

discussed.

IT: The Invitation to Tender was issued on Monday 16 March. A total of 14 companies were

successful at PQQ, with seven successful bids on each of the lots (Case Management System, Hosting

and Website).

The IT team’s focus over the coming weeks will be answering questions and hosting a number of

clarification meetings with the suppliers. The ITT stage will last until June.

As with the prototype, the team are also planning a number of workshops demonstrating the

solution with users, these are expected to take place in the autumn.

Our technical lead has also been investigating the options for two factor authentication, speaking

with industry suppliers on the specifics of their solutions.

The Working Group met on Wednesday 18 March for a progress update and discussed the PQQ

evaluation.

Facilities: The Facilities Working Group has proposed a joint meeting with the IT Working Group to

discuss IT infrastructure requirements and minimum standards for the divisions of the court. This

builds on work proposed by the IT Working Group outlining possible example solutions.

Linked to this, we are scoping furniture and ICT requirements for the London location and looking to

HMCTS for their experience of digital courts.

Legal: A reminder that a Summary of Responses to our Technical Review and Call for Evidence has

been published on the IPO website and is available to read here:

https://www.gov.uk/government/consultations/secondary-legislation-implementing-the-unified-

patent-court

43

We are waiting for the next meeting of the Working Group focusing on the Rules of Procedure to be

announced. We understand the Expert Drafting Group are currently discussing the rules, and

anticipate that the next meeting will be announced soon. Finance: We hosted a meeting of the Sub-group tasked with developing the fee structure and

consultation in London on Wednesday 18 March. Discussion focused on SME support and the

impacts of the cost modelling on the fee structure. It remains the Chairman’s priority to have the

consultation launched after the next Preparatory Committee.

HR & Training: The Project Board will consider the judicial package at its next meeting. At European

level progress on this workstream is largely dependent on the outcome from the meeting of the

working group co-ordinators. Once a collective understanding is reached, then a joint meeting of the

HR & Finance working groups will be needed ahead of any proposals to the Preparatory Committee.

This is not expected at the May meeting but is likely to be before the summer break.

Unitary Patent: The Select Committee meet next week on 23 and 24 March. This will continue work

on the level of renewal fees. We will report on the meeting in the next update.

Communiqués of the Select Committee meetings are available on the EPO website at:


Research: Our case counting report was published Thursday 19 March and can be accessed at:

https://www.gov.uk/government/publications/examining-patent-cases-at-the-patents-court-and-

ipec-2007-2013.

The report examines the number of patent cases litigated at the Patents Court and the Intellectual

Property Enterprise Court between 2007 and 2013. It focuses on the number of European patents

litigated at these courts, as these patents will fall under the UPC’s jurisdiction unless they are opted

out of the system.

Other factors the report considers include:

• The types of claims filed

• How often SMEs are parties in litigation

• The industrial sectors European patent cases fall into.


Janis

Janis Makarewich-Hall

Deputy Director, Head of UPC Taskforce

Intellectual Property Office | 4 Abbey Orchard Street, London SW1P 2HT |

[email protected] | t: +44 207 0342856 |bb: +44 7795 665 723

44



Preparatory Committee: The Preparatory Committee met on Friday 27 February.

The largest discussion was around the court fee structure and consultation, it is anticipated

that this will be launched this spring with very strong steer from the Chair to keep to this

timetable.

There were further discussions on the practicalities of the provisional application proposal,

indicative costs on Member State contributions and an update from the Budapest Training

Centre on the first phase of judicial training.

The Rules for the Admin and Budget Committees were agreed subject to minor drafting

amendments and the Chairman confirmed that the European Patent Litigators Certificate is

now in need of finalising and that it should come for adoption at the next meeting of the

Preparatory Committee in May.

The next Preparatory Committee meeting has been scheduled for 5 May 2015.

A short note summarising the meeting has been published and is available here :

http://www.unified-patent-court.org/news/87-8th-meeting-of-the-preparatory-committee-

27-february-2015

There is also a reminder that the full recording of the oral hearing in November 2014 on the

17th draft of the Rules of Procedure is still available:

http://www.unified-patent-court.org/2-uncategorised/88-auto-generate-from-title

Governance: The Project Board met on 25 February. The Board had a thorough review of

the project strategic risks along with discussions on the plans for the Legal and IT

workstreams.

The Finance, Legal and IT Sub-groups meet next week.

The UPC Taskforce met with the IP Judiciary and the Chancellor of the High Court on 2

March.

IT: The Pre Qualification Questionnaire (PQQ) evaluation took place on 24 February where

the technical team, along with observation from a German member of the IT Working

Group, filtered through the 36 responses received.

45

Work on the three lots (hosting, Case Management System and website) for the Invitation

to Tender (ITT) is almost complete and the process is almost ready to move from to PQQ

stage to ITT stage.

Facilities: We are continuing to explore and refine London property options for the UPC, as

well as developing planning approaches.

The Working Group Coordinator called for Member States to update on their progress on

local divisions and also mentioned the paper on security and public/media access to the

court at the Preparatory Committee meeting.

Austria announced they will host a local division which will be located within their Patent

Office in Vienna.

Legal: We are making preparations to publish a Summary of Responses to the Technical

Review and Call for Evidence which we hope to publish soon.

The English translations of the Advocate General Opinions on cases 146/13 and 147/13 have

been published and can be viewed here:

Case no. C-146/13

http://curia.europa.eu/juris/document/document.jsf?text=&docid=159764&pageIndex=0&

doclang=EN&mode=req&dir=&occ=first&part=1&cid=77447

Case no. C-147/13

http://curia.europa.eu/juris/document/document.jsf?text=&docid=159763&pageIndex=0&

doclang=EN&mode=lst&dir=&occ=first&part=1&cid=2838

Dr. Laura Starrs, our UPC Taskforce lead on the Legal Frameworks Working Group, was on

the UPC panel at the IBC Legal Biotech & Pharmaceutical Patenting Conference in Munich on

25 February. The panel discussed a range of UPC related topics including opt-out, fees for a

counterclaim for revocation, injunctions and the Bolar provision.

Finance: With several Signatory States offering support for keeping to the timetable to

launch the consultation on court fees in May this year, the Fees Consultation Sub-group is

now working hard towards agreeing a redraft of the consultation document and

accompanying assumptions by mid-April. With discussions on a number of key policy points

inconclusive we do not underestimate the task in hand but recognise the importance for

stakeholders of this issue, and the need to seek views as soon as possible.

HR & Training: Following discussions at the Project Board the team continue to investigate

the judicial structure of the court and the impact of differing resource and appointment

models. Work on developing proposals for judicial salary and terms and conditions continue.

The initial phase of training has been successfully concluded and detailed planning for the

next stage is being considered

46

Unitary Patent: There was a Select Committee workshop on the Unitary Patent distribution

key on 19 February. The next full meeting of the Select Committee is 23 and 24 March. This

will continue work on the level of renewal fees.

Details of the SC are available at http://www.epo.org/about-us/organisation/select-

committee.html



Research: Our case counting study will be published soon and I hope to be able to give you

further detail in my next update.


Janis





47

Unified Patent Court Update: 12 February 2015


Preparatory Committee: The next Preparatory Committee meeting is on 27 February. The

agenda includes a paper on provisional application, an initial draft of the court fees

structure consultation, an update on judicial training, a revised set of Rules on the European

Patent Litigators Certificate, and written status reports on IT and facilities.

I will report back on how the meeting goes in a future update.

Governance: The Project Board meets next on 25 February. The agenda will include in

depth discussions on the Legal and IT workstream plans.

The Legal and Finance sub-groups met this week.

We also held a strategy session this week looking at the various different UPC staffing roles

and how the court will function in practice.

IT: The opportunity to respond to the Pre Qualification Questionnaire has now ended. We

received 36 responses across the three lots (data hosting, case management, and website)

which will be evaluated over the next two weeks.

The IT Team will also look to conclude work on the Invitation to Tender over the next three

weeks.

Facilities: A joint meeting for the Facilities and IT Working Groups has been suggested for

April. This would focus on the ICT provision which States hosting part of the Court will need

to provide, such as web browsers and office software compatible with the case

management system being prepared by the IT Working Group.

We continue work investigating London property options for the UPC and are hopeful for a

decision in the spring.

Legal: In preparation for the Preparatory Committee we have been analysing a draft

protocol on provisional application of the UPC Agreement. This work is aimed at ensuring a

smooth transition towards the operational phase of the Court by allowing some functional

and operational provisions of the UPC Agreement to apply before entry into force. This work

was discussed by the legal sub-group on 12 February.

We successfully pressed for the European Patent Litigation Certification (EPLC) to be on the

agenda for the February Preparatory Committee meeting. This will be the first substantial

discussion since the consultation ended last year.

48

Finance: There was helpful discussion at the recent Expert Panel meeting on court fees, the

recommendations from which are now being considered by the Finance Working Group.

We have also been working on proposed contributions and budgets for the UPC, and the

underlying assumptions. The UK has put forward to the Financial Aspects Working Group a

paper detailing possible costs of the UPC based on assumptions around volume, efficiency

and likely costs.

HR & Training: Progress continues in the training of those who expressed an interest in the

court but did not meet the necessary criteria and discussions about terms and conditions

and HR matters are ongoing.

Unitary Patent: The Select Committee will meet on 19 February for a workshop to discuss

the distribution arrangements for the renewal fee. The next full meeting of the committee is

23 and 24 March.

I'd like to remind you that draft administrative rules relating to unitary patent protection

and are available at:

http://documents.epo.org/projects/babylon/eponet.nsf/0/658AE58124AC70DBC1257DB10

028B3D4/$File/e_draft_rules_unitary_patent.pdf



Janis





49



Preparatory Committee: The executive group are meeting today in Brussels to confirm an

agenda for the next Preparatory Committee meeting. I will let you know more on the

agenda in my next update.

There is an expert panel meeting on 4 February in London. This is the second meeting of

this advisory group and the main focus of their discussion will be on the court fees structure

and interpretations of the opt-out.

Governance: The Project Board met on 29 January. The agenda included discussion on

progress on facilities, an update on the forthcoming fees consultation, and a paper on costs

of the court and the financial contributions by signatory states.

IT: The closing date for responses to the Pre Qualification Questionnaire is 2 February. For

more information, or to see the notice, please go to the IPO’s procurement portal:

https://www.ipoprocurement.co.uk/procontract/ipo/supplier.nsf/frm_home?ReadForm

The IT Working Group is meeting on 4 February in London to discuss tender documentation.

Facilities: We continue to investigate London property options.

The Facilities Working Group met by teleconference on 27 January, discussing privileges and

immunities for court staff and locations, building security, and ICT functions.

Legal: We are still waiting for the confirmation of the next meeting of the Legal Working

Group on the Rules of Procedure which is expected for February.

Finance and HR & Training: There was a meeting between the Financial Aspects and the HR

and Judicial Training Working Groups last week primarily to discuss judicial terms and

conditions. It is clear that a number of important challenges remain in terms of balancing

flexibility for the judiciary and the UPC with overall affordability, notwithstanding the

context and status of a new and complex international court. It was agreed that further

work was needed to develop detailed provisions in terms of salary, allowances and tax

treatments. We expect further meetings to discuss these issues in greater detail.

Unitary Patent: As reported in our last update, the EPO Select Committee (SC) met on 9

December. At this meeting the participating states reached provisional agreement on the

administrative rules

(http://documents.epo.org/projects/babylon/eponet.nsf/0/658AE58124AC70DBC1257DB10028B3D4/$File/e_draft_rules_unitary_patent.pdf) that EPO will apply to requests

50

for Unitary Patent Protection. The SC chair repeated his aim to conclude discussions on UP

fees by June 2015. The Select Committee will meet again on 19 February.

Communiqués of the Select Committee meetings are available on the EPO website here

http://www.epo.org/about-us/organisation/communiques.html .

Janis





51



Preparatory Committee: The nest meeting of the Preparatory Committee is scheduled for

the 27 February. The Executive Group will be meeting to discuss the agenda, and I will

update you of this once it is confirmed. The second meeting of the UPC Expert Panel will

take place in early February. A reminder of the membership of this Panel and its remit can

be found on the UPC website at http://www.unified-patent-court.org/news/79-chairman-

invites-new-expert-panel-to-advise-preparatory-committee

IT: The Procurement Notice and Pre Qualification Questionnaire (PQQ) were published in

December in the Official Journal of the EU. The closing date is the 2 February. For more

information, or to see the notice please go to the IPO’s procurement portal:


We are currently working on the tender documentation and evaluation criteria which we

expect to issue in March to those companies who have been shortlisted in the PQQ process.

A key consideration is security of data within the system: we will ensure suppliers conform

to ISO standard 27001 on information security management and plan to use the best

commercially available encryption, amongst a number of other measures. We are also

working with other signatory states on the possibility of alternatives to e-filing in

exceptional cases when highly sensitive or secret information is used in court cases. We are

working with the Legal Working Group on this issue.

Legal: We attended a meeting of the Legal Working Group which is looking at the Rules on

Court Fees. This will be part of the upcoming court fee consultation. We expect that there

will be a meeting of the Legal Working Group on the Rules of Procedure in February.

Finance: Excellent progress has been made on a revised Rule 370 and Explanatory Note

which will be out for public consultation in the Spring. We will also be participating in the

second meeting of the joint HR & Finance Working Groups later this month when we will

progress discussions on remuneration.

Facilities: We continue to investigate property options in London. Whilst we have informally

sought views on Aviation House and Building 1000, the options we are exploring go much

wider to include spare capacity within the HM Courts and Tribunal Service estate and within

the commercial market. This is, of course, within Property Controls constraints, where all

viable government-owned/leased property must be prioritised. We welcome comments to

help inform that final Ministerial decision on what you think are the most important

priorities in terms of facilities and location, and the potential trade-offs between the two.

52

HR & Training: The joint meeting between HR and Finance Working Groups already

mentioned will continue discussion of the formal appointment process, judicial terms and

conditions, staff regulations and on-going training.

Unitary Patent: The EPO Select Committee met on 9 December to continue consideration of

administrative rules for Unitary Patent Protection, renewal fee simulations, the distribution

key, and its future work programme. Provisional agreement was reached on the UPP

administrative rules, although Rule 25 will require further discussion.

The draft consolidated rules are available on the Select Committee page of the EPO website

at:

http://documents.epo.org/projects/babylon/eponet.nsf/0/658AE58124AC70DBC1257DB10

028B3D4/$File/e_draft_rules_unitary_patent.pdf

The Chairman reiterated his intension to conclude substantive discussions relating to the

arrangements for Unitary Patent Protection by June 2015. Dates for several meetings in

early 2015 were announced. The EPO will host a workshop on Unitary Patent fee levels for

Select Committee delegations on 19 February.

Communiqués of the Select Committee meetings are available on the EPO website here:


Useful documents: A reminder that there is a helpful ‘plain English’ guide on the UPC

website for those that want to avoid the legal jargon:

(http://www.unified-patent-court.org/images/documents/enhanced-european-patent-

system.pdf)

Janis





53

Unified Patent Court Update: 19 December 2014

Here’s the latest update from the UPC Taskforce.

Preparatory Committee: The Chair and Vice-chair of the Preparatory Committee had a

working level meeting with colleagues from the EPO last week in Munich, the objective of

which was to explore areas that would potentially benefit the UPC. The discussions focused

on the training framework from the European Patent Academy, corporate functions of the

court and potential opt-out proposals. No decisions were made and the Chairman is going to

update the Preparatory Committee at the next meeting in February 2015.

http://www.unified-patent-court.org/

Governance: The UPC Project Board met for the last time in 2014 on 16 December where

there were detailed planning sessions on both Facilities and HR & Training. The next

meeting of the Project Board will be 29 January. The sub-groups of the Project Board have

all also met for the last time this year and will all meet next during the week commencing

the 12 January.

Workstreams:

IT: We have received a contribution from the French government towards the costs of the IT

project and issued the tender notice and pre-qualification questionnaire (PQQ) on 15

December. The notice and PQQ set out the three procurement lots: hosting, website and

case management/eFiling.

Further detail of the tender notice and PQQ can be found on the IPO’s procurement portal

here


The IT team was in Paris this week meeting with French court staff and judges at the

Tribunal de Grande Instance, examining judicial and registry processes in detail, lawyers' e-

filing software and current and future courts' software.

Legal: Unfortunately, due to time pressures, it will now be impossible for us to lay the

statutory instrument before the end of this Parliament. The timetable we set, to make the

changes required before Parliament rises, was always challenging and extremely tight and it

is clear to us now that we have run out of time. However, we remain confident of being able

to bring forward legislation after the General Election and we expect to make the necessary

changes to national law by the end of 2015. The Legal Frameworks Working Group will meet

on 9 January to discuss the court fees proposal in detail. We also expect a further meeting

on the Rules of Procedure to take place early in the New Year.

Finance: Work on court fees is progressing and the Fees Consultation Joint sub-group met

on 8 December. Proposals from the sub-group were considered by the Financial Aspects

54

Working Group meeting which took place on 17 December. The Working Group also looked

at court costs and the budget, Signatory State contributions and remuneration. The Finance

Workstream's focus for the New Year will be on meeting the Spring deadline for the fees

consultation and progressing work on remuneration.

Facilities: The Facilities Working Group continues to discuss Privileges and Immunities for

the operation of the UPC and how to secure these across all Signatory States. We continue

to investigate and develop options for a decision in Spring 2015 on the London location for

the UPC.

HR & Training: The UK has now submitted a proposal on internships, along with France,

Germany and the Netherlands and it is anticipated that the training will begin in February

2015 with the internships beginning mid-year. The focus for the next year will be on the

formal appointment process, judicial terms and conditions, staff regulations and on-going

training.

Unitary Patent: The EPO Select Committee met on 9 December to continue consideration of

administrative rules for Unitary Patent Protection, renewal fee simulations, the distribution

key, and its future work programme. Provisional agreement was reached on the UPP

administrative rules, although Rule 25 (on financial matters) will be placed in square

brackets until further discussion on this point is concluded. The draft consolidated rules will

shortly be published on the Select Committee page of the EPO website. Discussion on

annual renewal fee levels continued and further simulations, requested by delegations and

users, were discussed. The Chairman reiterated his intension to conclude substantive

discussions relating to the arrangements for Unitary Patent Protection by June 2015. Dates

for several meetings in early 2015 were announced. Communiqués of the Select Committee

meetings so far are available on the EPO website http://www.epo.org/about-

us/organisation/communiques.html

I’d like to take this opportunity to thank everyone we have worked with this year for their

on-going support and patience as this work progresses. We have a challenging year ahead

and as always I welcome your input, expertise and engagement.

Best wishes, from all of us on the Taskforce, for a restful and relaxing festive season and all

the best for 2015.

Janis





55

Unified Patent Court Update: 4 December 2014

Here's the latest update from the UPC Taskforce. Preparatory Committee: Members of the main Central Divisions and Court of Appeal - UK, Germany, France and Luxembourg met in Paris on 24 November to begin discussions on how the main 'seats' of the Court will function. The discussions will become increasingly important as the project moves into the transitional phase later next year. The User Hearing on the Rules of Procedure took place last week on 26 November in Trier. I understand that a recording of the event will be available from both the ERA and UPC websites early next week. Links can be found at: https://www.era.int/cgi-bin/cms?_SID=3c3f6700d7cf3adebe2cb417eeea27b61c971 95900358453375693&_sprache=en&_bereich=artikel&_aktion=detail&idartikel=12 5048 http://www.unified-patent-court.org/ Governance: The UPC Project Board will meet next on 16 December. The agenda will cover detailed planning sessions on Facilities and HR & Training. Workstreams: IT: Configuration has now stopped on the prototype but it is still available to test and provide feedback. http://prototype.unified-patent-court.org/ The IPO hosted an IT Working Group tender workshop on Monday 1 December, where we discussed the contents of the tender requirements documents. The procurement notice and pre qualification questionnaire are now ready to publish in the Official Journal of the European Union (OJEU). We will publish them in coordination with a financial contribution from the French Government. Legal: Taskforce members leading on Legal Frameworks attended the User Hearing on the Rule of Procedure last week. The main topics covered were Rule 5 (Opt-Out), Rule 14.2(c) (additional languages in the proceedings before the UPC); Rule 118.1 (Injunctions), and Rule 220 (appeals, in particular procedural appeals). Four further topics were then discussed: Rule 85ff (Actions against decisions of the EPO), Rule 17ff (evidence), Appeals other than those under Rule 220 (Rules 242, 243), and Representation (Rule 286). Finally the floor was opened to general comments. The Legal Frameworks Working Group and Expert Panel will now meet early in the New Year to discuss the outcomes of the User Hearing and continue work on the Rules. Finance: The Finance Sub-group met on Wednesday 3 December. Discussions focused on the fees consultation, indicative contributions and the first year's budget for the Court. This will feed in the continued meetings of the Fees Consultation Joint sub-group which meets next on Monday. Facilities: Work continues gathering information to allow a decision in Spring 2015 on an appropriate property for the Court in London. The Facilities Working Group will be meeting next week in order to resume discussions on a Hosting Agreement for the Court to operate with the necessary privileges and immunities across all Signatory States. HR and Training: The HR and Training Working Group will meet with the Financial Aspects Working Group on Monday to begin discussions on judicial salary and conditions.

56

Unitary Patent: The next meeting of the EPO Select Committee will take place next week on 9 December. Communiqués of the Select Committee meetings so far are available on the EPO website here: http://www.epo.org/about-us/organisation/communiques.html As always, please feel free to forward this note to anybody who may find it useful. I, and the rest of the Taskforce, are happy to discuss any aspect of this. Janis Makarewich-Hall Deputy Director, Head of UPC Taskforce Intellectual Property Office | 4 Abbey Orchard Street, London SW1P 2HT | [email protected] | t: +44 207 0342856 |bb: +44 7795 665 723

57


Here's the latest update from the UPC Taskforce. Preparatory Committee: The 8th meeting of the Preparatory Committee has been confirmed for 27 February 2015. The Executive Group will meet ahead of this in January. It is anticipated that February's agenda will cover Rules on the European Patent Litigation Certificate (following the consultation earlier this year), the court fees consultation and the rules of the Advisory Committee. The Advocate General's Opinion on the Spanish Challenge (cases C-146/13 and C-147/13) was published on Tuesday 18 November. A press release from the Court on the Opinion is available here: http://curia.europa.eu/jcms/upload/docs/application/pdf/2014-11/cp140152en .pdf The Preparatory Committee has also made a comment on the Opinion and this is available from UPC website: http://www.unified-patent-court.org/news Governance: The Project Board met this week on Tuesday 18 November. The agenda included a review of the Finance Workstream future planning, discussion on the long term responsibility for the court and the Legal Workstream's timetable. The Steering Board met on 10 November and discussed SME support on court fees and stakeholder engagement. The next meeting is scheduled for February 2015. The IT, Legal and Finance Sub-groups all held meetings in the last week. Workstreams: IT: Work on the prototype is coming to a close. The team are now implementing the last of the updates ahead of finishing configuration at the end of November. Additional language support, for French and German, has now been added to part of the prototype so you can now select your preferred language via the menus and set a preference within your profile. Those interested in viewing the latest updates or in providing further feedback on the prototype should follow this link: http://prototype.unified-patent-court.org/ The last workshop using the prototype takes place in Munich on the 27 November. There is an IT workshop including members of the Working Group on 1 December to look at the system specification that will form the basis of the tender documentation. Legal: Work on finalising our Statutory Instrument and implementing legislation continues. At the recent meetings of the Legal Sub-group and Project Board discussion focussed on next steps and proposed work plan for the coming weeks. Some members of the Taskforce will be attending the public hearing on the Rules of Procedure on 26 November. I'd like to remind you that a webcast for the event is planned and can be accessed on the website of the European Law Academy www.era.int. There is no registration procedure; the webcast will be live about an hour prior to the proceedings beginning. Finance: The first meeting of the Fees Consultation Joint sub-group met on 12 November. Conversation was encouraging with members sharing thoughts and ideas on content and detail. The next meeting is scheduled for 24 November as the work on the consultation gathers pace. As part of this we are continuing to work closely with our economists on fees modelling. Facilities: As mentioned previously we are building towards a Spring decision on the London location for the court.

58

Following stakeholder recommendations we are also visiting the EPO next week for a tour of their buildings to help inform fit out requirements for the London location. Good progress with other Member States has been made on the Hosting Agreement, with Germany also requiring multilateral agreement on a core set of Privileges and Immunities. HR and Training: The UK has made a proposal on UK internships for judicial training next year. The Judicial College will participate in a proposal that has been developed jointly with other European training providers concerning judge craft and judicial skills at stage 3 of the initial training cycle. The UK has also provided initial comments on draft regulations on the status of judges and looks forward to further discussion of these proposals. A joint meeting with the HR & Training and Finance working groups has been convened to consider these proposals in more detail. Unitary Patent: The next meeting of the EPO Select Committee has been confirmed for 9 December. Communiqués of the Select Committee meetings so far are available on the EPO website here: http://www.epo.org/about-us/organisation/communiques.html As always, please feel free to forward this note to anybody who may find it useful. I, and the rest of the Taskforce, are happy to discuss any aspect of this. Janis Makarewich-Hall Deputy Director, Head of UPC Taskforce Intellectual Property Office | 4 Abbey Orchard Street, London SW1P 2HT | [email protected] | t: +44 207 0342856 |bb: +44 7795 665 723

59


Here's the latest update from the UPC Taskforce.

Preparatory Committee: The Preparatory Committee had its last meeting of 2014 this week.

There was a useful update from Signatory States on their ratification status. From the discussion it

was clear that there will be no further ratifications before the end of the year, however, a handful of

countries were aiming to ratify in the first half of 2015. The situation will continue to be monitored

by the Chairman at future meetings.

Updates from Working Group co-ordinators were given on judicial training, IT and facilities. The

latter also included requests from Members on whether they required HQ agreements as part of

their ratification process. The meeting also discussed the timetable for the court fee consultation

and agreed to a launch date in Spring next year. A presentation on the Rules on Mediation and

Arbitration concluded that this paper would now be revised and brought back to the next meeting.

Following the consultation on the European Patent Litigation Certificate the team are still

considering the proposals and will present revised Rules at the next meeting.

The Chairman announced that next year's meetings will likely be in February, April, June, October

and December.

The Committee also received details on the forthcoming oral hearing on the Rules of Procedure on

26 November in Trier. Further information about this can be found on the UPC website. A webcast of

the event is planned and can be accessed on the website of the European Law Academy

www.era.int.


Governance: The next meeting of the Legal Sub-group takes place on Wednesday 12 November. The

IT and Finance Sub-groups meet the following day on 13 November. The Project Board will next

meet on 18 November and will cover a deep dive on the Finance project plan and the government

response to the recent technical review and call for evidence on implementing legislation.

Workstreams:

IT: Work continues configuring the prototype and gathering user feedback. In response to requests

from users a form for an application for preserving evidence ("saisie", UPC rule 192) has been added,

and two different versions of the statement of claim for infringement are available for comparison.

To date over 1200 users have used the prototype, with over 200 creating accounts and starting to

file a statement of claim, from almost 50 countries.

I continue to welcome volunteers to test the prototype and those interested should follow this link:

http://prototype.unified-patent-court.org/

60

Work continues to prepare the tender specification. The team have listened to the differing security

requirements of patent lawyers and government colleagues regarding the necessity or otherwise of

identity authentication for external users of the IT system.

The final user workshop to assess the prototype will be held in Munich on 27 November.

Legal: We continue working closely with our legal team at BIS on the Statutory Instrument. We are

hoping to publish the government response to the recent technical review and call for evidence on

implementing legislation by the end of 2014.

Finance: A fees consultation sub-group, made up of members from the Financial Aspects Working

Group and the Legal Frameworks Working Group, has now been set up and will have its first meeting

on 12 November, beginning discussion on progressing the work for the upcoming fees consultation.

We are also working closely with counterparts in France and our economist team on furthering the

court fees model. Our Steering Board will consider a paper on SME support next week.

Facilities: We continue our work investigating suitable properties in London, focusing on key

decisions and initial costing estimates. On Tuesday the team met with colleagues from HMCTS to

discuss staff modelling and arrangements.

HR and Training: There was a HR and Training Working Group meeting on 30 October. Discussions

were constructive and a good deal of ground was covered.

Following the Expression of Interest exercise, it was confirmed that training is to begin in January

2015. The European Patent Academy has confirmed that it will develop detailed proposals that cover

the interests of all patent courts.

The UK will shortly confirm their involvement in hosting internships with specifics being discussed

and agreed with the UK Judiciary.

Unitary Patent: The EPO Select committee met on 28 and 29 October to continue discussions on

technical aspects related to the administrative rules for the Unitary Patent and the level of annual

renewal fees.

The committee received a presentation from the EPO relating to cost estimates for administering the

Unitary Patent. This will feed into discussions on a sustainable level for the annual renewal fee. The

committee agreed several technical amendments to the draft administrative rules, although, it was

unable to agree on a common approach to one point related to the surrender of unitary patents.

This aspect will be considered again in December. Following a suggestion from the UK delegation the

Committee agreed that a consolidated version of the administrative rules should be made publically

available after the next meeting.

The final item on the agenda was a paper from the chair on the criteria for determining distribution

arrangements for UP renewal fees (the amount each participating state will receive once EPO has

deducted its 50% share). There was little time for substantive discussion on this point and it will be

considered again at the next Select Committee meeting on 9 December.

Communiqués of the Select Committee meetings so far are available on the EPO website here:

61


As always, please feel free to forward this note to anybody who may find it useful. I, and the rest of

the Taskforce, are happy to discuss any aspect of this.



Intellectual Property Office | 4 Abbey Orchard Street, London SW1P 2HT | janis.makarewich-


62



Preparatory Committee: The agenda for the next meeting of the Preparatory Committee on 4

November 2014 was confirmed at the meeting of the Executive Group last week, and includes a first

discussion on court fees and the rules on mediation and arbitration. There will also be a further

discussion on the rules for legal aid. Additionally there will be verbal updates on judicial training and

facilities. The Committee will also receive a status report on the progress on IT. The Chairman has

requested specific time to discuss the ratification status from all Signatory States.


In the Spanish challenge, the Advocate General's opinion in cases C-146/13 and C-147/13 is now

expected to be published on 18 November.

(http://curia.europa.eu/jcms/jcms/Jo1_6581/?dateDebut=18%2F11%2F2014&dateFin=18%2F11%2F

2014)

Governance: The IT Sub-group met on 16 October. The Project Board met last Tuesday 21 October

and discussed our approach to legislative changes and had an initial discussion on the London

property search for the Central and Local divisions. The Board also reviewed its strategic risks.

Workstreams:

IT: This week there has been a two-day workshop in Paris. The objective of the workshop is to allow

users, including court staff and those from the legal profession, to provide the team with valuable

detailed feedback on the prototype.

Work continues configuring the prototype, incorporating elements of the feedback we have

received. New features this week include a third version of the statement of claim form, a new

version of the preliminary objection form and a new form for statement of defence.

To date over 1000 users have used the prototype, with over 180 creating accounts and starting to

file a statement of claim from more than 40 countries.

The IT Working Group will have its monthly teleconference on Monday 27 October.

I continue to welcome volunteers to test the prototype and those interested should follow this link:


Legal: Our focus remains on concluding work on our impact assessments and working closely with

our legal team at BIS on making changes to the Statutory Instrument.

I am still waiting on confirmation of details of the user hearing on the Rules of Procedure in Trier,

63

Germany and will forward information on this when I know.

Finance: There was a meeting of the Financial Aspects Working Group on Wednesday 22 October in

Paris which we attended. The agenda included the court fees and consultation (in preparation of the

forthcoming Preparatory Committee discussion), modelling estimated costs and tackling cross-over

issues where there are interdependencies with other Working Groups.

Facilities: We had a useful discussion this week on the assumptions and recommendations we are

working to when looking at the location of the UPC in London. This also included examining the

properties that are available within the Government Estate. There is an expectation that we will

select a Government-leased or owned property, as the Government is seeking to rationalise its

London estate. As set out in the UPC Agreement, the property will be paid for by the hosting

Government, rather than the UPC. We will investigate those options in more detail as we plan for a

spring 2015 decision. I will be issuing a separate note on this topic shortly.

HR & Judicial Training: The HR & Judicial Training Working Group will be meeting next week on 30

October in Brussels. The group will consider proposals for the judicial training framework and have

an initial discussion on the terms and conditions of judicial appointment. We also expect the group

to begin discussing the process for appointing judges to the Court.

Unitary Patent: The EPO Select Committee meets next week (on 28 and 29 October) to continue

discussions on the level of annual renewal fees for Unitary Patents. It is also expected to consider

the remaining technical points related to the Administrative Rules for the Unitary Patent and to start

discussions on the distribution of renewal fees.



Research: Our Taskforce economist recently attended the conference "The EU Patent Package:

Multidisciplinary and International Perspectives" hosted by KU Leuven and the University of

Antwerp. The event hosted 12 sessions, with speakers from academic, industry and legal

backgrounds including Margot Fröhlinger, European Patent Office, and Paul van Beukering, Chair of

the Preparatory Committee. Speakers presented on a wide range of topics such as specialised IP

courts and international experiences, economic and governance perspectives, as well as industry

views on the UPC and UP. The event was informative and useful.







64



Preparatory Committee: The next meeting of the Preparatory Committee will take place on 4

November 2014 in Brussels. Ahead of that the meeting of the Working Group Co-ordinators will take

place next Monday (13 October) to discuss and agree the agenda.

In my next update I will be able to confirm the agenda and the items that will be discussed.

Governance: The next UPC Project Board is scheduled for 21 October. We had legal and finance sub-

groups this week.

Workstreams:

IT: Work continues configuring the prototype, providing additional features and updates as we

receive feedback from user testing.

I would welcome volunteers to test the prototype and those interested should follow this link:


We also held user workshops in London on 7 and 8 October which provided us with further detailed

feedback on the prototype system and how to make processes more user-friendly.

To date over 300 users have used the prototype from over 25 countries.

Legal: We have completed the analysis of the consultation responses and the team are now focused

on updating the Impact Assessments and the statutory instrument.

The Preparatory Committee's Legal Frameworks Working Group completed its consideration of the

16th draft of the Rules of Procedure at its fourth meeting in Berlin on 24 and 25 September. A

revised draft and explanatory note is expected in the coming weeks, ahead of an invitation-only User

Hearing on the Rules which has been scheduled for 26 November in Trier, Germany. I will update

you on more of the details as I know them.

Finance: At the Finance sub-group on Tuesday we discussed caseload estimates and had an in-depth

discussion on progress on the fees work, in light of discussions with colleagues from Germany last

week. This work will feed into discussions at the Financial Aspects Working Group meeting on 22

October in Paris. The Agenda for the Working Group meeting is expected to include sign-off on the

financial regulations, further discussion on next year's court fees consultation, support for SMEs and

costs.

Facilities: There was a Facilities Working Group meeting in Berlin on 30 September. It was a useful

opportunity to compare plans and progress on locations for the UPC. There was also a specific

meeting with Germany, France, Luxembourg and the UK on progress regarding the Central Divisions

and the Court of Appeal.

65

HR & Judicial Training: The HR & Judicial Training Working Group will be meeting at the end of

October to consider proposals for the training framework and an initial discussion on the terms and

conditions of judicial appointment. We expect the group to begin discussing the process for

appointing judges to the Court.

Unitary Patent: The EPO Select committee will be meeting on 28 and 29 October to continue

discussions on the level of annual renewal fees for Unitary Patents. It is also expected to consider

the remaining technical points related to the Administrative Rules for the Unitary Patent and to start

discussions on the distribution of renewal fees.



Research: We have now received data relating to the number of European patent cases brought

before UK courts between 2007-2013. Researchers have also provided some analysis highlighting

litigation involving SMEs and UK firms. We expect this to be ready for publication towards the end of

2014.







66



Preparatory Committee:

The Preparatory Committee website has published details of the new Expert Panel membership

which is meeting for the first time today in London. This body provides advice and guidance to the

Chairman and working group co-ordinators.

The Preparatory Committee has also agreed a revised Roadmap which can be found at

http://www.unified-patent-court.org/news

The next meeting of the Preparatory Committee will take place on 4 November 2014 in Brussels. I

will give more detail of the agenda once it is known in a later update. As usual the working group co-

ordinators will be ahead of time.

The CJEU has announced that the expected Advocate General's opinion on the Spanish Challenge

(CJEU cases C-146/13 and C-147/13) will not be published in October. No revised dated has been

given.

Governance: There was a Project Board meeting today that discussed progress on court fees. There

was also an update on the recent consultation on changes to the Patents Act.

Workstreams:

IT: Work on the prototype e-filing/case management system is under way. Over October, judges,

court staff and lawyers/patent attorneys will test and provide us with feedback on the functionality

of the prototype. This will enable us to test our 'off-the-shelf' approach and inform our tender

specification.

After looking at many off-the-shelf products, we have chosen GoPro, an Icelandic supplier, to

configure their system for the prototype based on part of the Rules of Procedure. Data is being

hosted by T-Systems in Germany.

GoPro began work late last week and the first iteration of the prototype should be available online

from Monday 30 September for lawyers/patent attorneys and from 6 October for judges and court

staff around the world to test and provide feedback to us. Testers will of course have experience of a

variety of systems and will be able to compare functionality of those systems with that of the

prototype.

We would welcome volunteers to test the prototype. To provide useful feedback, testers should

allow between 30 minutes and 2 hours. Please contact Paul Russell and Mark Craddock if you would

like to help ([email protected]; [email protected] ). The prototype will be re-

configured/updated during October based on tester feedback.

67

We have further user workshops lined up, in London on 8 October, Paris 23-24 October and

Munich(end November) to help us capture detailed feedback on the prototype, and discuss other

functions of the system, to inform our tender.

Legal: There was the final meeting this week in Berlin of the subgroup to discuss the Rules of

Procedure. I hope to give further detail on discussions in my next update and hopefully a date for

the user hearing.

Domestically work continues analysing the responses to our consultation.

Finance: We have been working to better understand how actions and processes will take place in

the UPC in order to help design the fees framework.

We are also meeting with colleagues across Europe in the coming weeks to discuss the Preparatory

Committee consultation on fees, which we hope will take place in Spring 2015.

Facilities: We have now developed our property requirements into detailed criteria and we are using

Ministry of Justice court examples and financial modelling to inform cost estimates for the UPC

facility in London. The Project Board will discuss this information in October.

The next Facilities Working Group meeting is happening in Berlin on 30 September where we will

discuss progress on identification of premises, case volume estimates, ICT requirements for court

buildings, hosting agreements, court staff and the UPC's operating model.

HR & Judicial Training: The work has still not concluded on the training framework but it is clear

whilst basic training could be provided by the European Patent Academy this will need to be

supplemented by training in more specific areas such as judgecraft and languages by others.

It is anticipated that a meeting of the HR & Training working group will take place sometime in

October.

Unitary Patent: The next meeting of the Select Committee of the EPO to discuss the Unitary Patent

has been scheduled for 28th October. We do not yet know the agenda and I hope to be able to

explain more in my next update.

Communiqués of the meetings so far are available on the EPO website here:


Research: You might find it interesting to see this high-level summary from the recent European

Patent Reform Forum (please note you need a subscription to Managing IP to read this):

http://www.managingip.com/Article/3379662/European-Patent-Reform-Forum-2014-the-

highlights.html?LS=EMS1072197

68






[email protected] | t: +44 207 0342856 |bb:+44 7795 665 723

Unified Patent Court Update 3 March 2016 · Unified Patent Court Update: 3 March 2016 Here is the...

Documents

Transcript of Unified Patent Court Update 3 March 2016 · Unified Patent Court Update: 3 March 2016 Here is the...