UPC Rule changes in the 18th Draft include relaxation of some tight deadlines
The 18th draft Rules of Procedure for the Unified Patent Court have been published by the Unified Patent Court Preparatory Committee. Changes to the Rules since the 17th draft include:
An ability for a proprietor not on the Register to opt a patent out of the jurisdiction of the Court (Rule 5.1(b)) and a requirement, when opting out, to file a declaration of proprietorship (Rule 5.3(e)). If an opt-out is defective, it can be corrected and takes effect only once corrected (Rule 5.6).
An ability for a new proprietor of a patent to take the place in proceedings of an existing proprietor (Rule 8.4), even if the new proprietor is not registered as such on the Register (Rules 8.5, 43.2 and 60.3).
Clarification of the language regime in countries (such as Belgium) where there is more than one official language. In the 17th draft, it was specified that the Claimant may choose the language in such situations (Rule 14.2) subject to certain provisos. One of the provisos was that a Contracting Member State may indicate that the official language “of the region of the defendant’s business” shall apply. The 18th draft simply adds that a Contracting Member State may similarly indicate that the official language “of the defendant” shall apply (Rule 14.2(b)). In either case, if there are two or more such defendants with different languages, the claimant may choose.
Where one of the EPO languages (English, French or German) is designated instead of a local official language, the Court may, during oral proceedings, use an official language of the Member state hosting the local division or an official language designated by the states sharing a regional division (Rule 14.2(c)).
The periods for reply (by the claimant) to the statement of defence in the case where there is no counterclaim for revocation has been extended from one month to two months (Rule 29(a)) to match the period for reply when there is a counterclaim. The previous period of one month was ambitious and probably unrealistic and likely to call for extension on a regular basis. Similarly, the period for reply (by the defendant) to the defence to counterclaim has been extended (Rule 29(d)) and the period for filing (by the defendant) of a defence to an application to amend (Rule 32.1) and the period for filing (by the claimant) of a defence to counterclaim for infringement (Rule 56.1).
An application to amend must explain why the amendments satisfy Articles 84 and 123(2) and (3) EPC (Rule 50.2).
A new rule (Rule 316A) has been introduced allowing forced intervention. A party may contend that a person should be bound by a decision in the action even where that person refuses to intervene. The person declining to intervene has one month to state that intention in writing or be bound by the decision. If such a statement is filed, the parties will be heard and the person declining to intervene may be given an ultimatum to do so or be bound by the decision.
The rules for legal aid (Rules 376-381) have been expanded. The Administrative Committee is to set out: thresholds above which legal aid applicants are deemed wholly or partially able to bear their costs; maximum amounts of legal aid and of recoverable costs; and how income and assets are to be assessed.
Monday, July 27, 2015