The 18th draft of the UPC Rules of Procedure were presented to the UPC Preparatory Committee in July. With apparently only a few items still to settle, the Committee expects to agree on a final set of Rules at its meeting in October 2015.
The 18th draft version follows the oral hearing that took place on the 17th draft version held in Trier in November 2014. However, the changes from the 17th draft are not substantive. They include the following:
- Opt-outs: The rule relating to opt-outs of standard European patents (rule 5) has been clarified to set out the procedure where a patent or application is owned by two or more proprietors/applicants but they are not all recorded on the Register, and also for the opting-out of SPCs. Further, the rule now clarifies that it is possible to correct a defective opt-out application, although the opt-out will only be effective from the date of correction (ie the date that payment is received). Given the consequences of a failure to opt-out (i.e. that the patent could be revoked across the contracting Member States), this is an important provision.
- Distribution of actions in the Central Division: The Central Division has three sections (Paris, London and Munich). The appropriate section will depend upon the classification of the patent. Rule 17 now provides for the situation where a single patent has more than one classification, or the action involves more than one patent and no majority of the patents have a single classification. The allocation of the case in such circumstances will be determined by the presiding judge of the section of the first classification of the single patent or of the first patent listed in the Statement of Claim deciding whether to retain or refer the case to another division. If the presiding judge of the division to which a case is referred to decides its seat is not appropriate to hear the case, it will be referred to the President of the Court to determine.
- Time limits: a number of time limits for certain steps in an action have been revised from the previously tight limit of one month to two months, for example:
- claimants will now have two months following service of a defence where there is no counterclaim for revocation to lodge any reply to the defence.
- defendants will have two months in which to lodge a reply to a defence to counterclaim (and any rejoinder to the reply to the defence).
- where there is a counterclaim for infringement in a revocation action, the revocation claimant will now have two months to lodge its defence to the counterclaim for infringement.
- Security for costs: where a party fails to provide adequate security in the time stated, the Court may give a default decision.
In the meantime, the consultation on UPC fees and recoverability of costs recently closed. The results of the consultation are hotly anticipated and may lead to further changes to the rules of procedure.