Update from annual EPLIT meeting in Paris

Olaf Ungerer, German and European Patent, Trademark & Design Attorney and registered UPC representative, attended the annual EPLIT meeting in Paris on 25^th and 26^th of May. The meeting was an opportunity for judges, attorneys and a member of the administrative committee to discuss important issues shortly before the start of the new Unified Patent Court (UPC) on 1^st of June. The agenda  included an UPC official update, a UPC judges panel, a discussion about the role of patent attorneys before the UPC and the future of EPLIT.

 

What is EPLIT?

 

EPLIT (European Patent Litigators Association) is the association for European Patent Attorneys who may act before the UPC, national courts and in inter partes proceedings at the European Patent Office (EPO). Most of EPLIT’s members meet the requirements to qualify as representatives before the UPC. Other legal practitioners, such as attorneys-at-law or nationally qualified patent attorneys, are also among EPLIT’s membership.

 

EPLIT participated in the preparation of a code of conduct for UPC representatives in cooperation with the Institute of Professional Representatives before the European Patent Office (epi) and the European Patent Lawyers Association (EPLAW). Working groups have been set up for the topics of substantive law, qualification, cost of procedure, code of conduct, privilege, education/training, procedural law and news. A new working group “case management liaison” or “UPC liaison” is planned, that shall support the online Case Management System (CMS) at the UPC from the viewpoint of the UPC representatives.

 

Opt-out status?

 

At the present stage, a total number of opt-out requests in the range of 200 to 250 thousand is estimated, which is less than expected. However, it is not clear yet whether the relatively low number of opt-out requests is caused by the overload of the CMS online filing system as the only option for filing opt-out requests. Of course, staying in the new UPC system may provide attractive benefits of homogenized patent litigation throughout the member states, increased legal security, reduced time delay and costs.

 

How is the UPC financed?

 

During a transitional period of at least 7 or at most 14 years, the costs of the UPC will be born by the member states. After the transitional period, the UPC will hopefully be in a position to cover the costs by its own fees.

 

Are there any cost reductions for SMEs?

 

Yes, there are. But, an important issue to keep in mind is that the term “SME” is interpreted as “small and micro-sized entity” at the UPC. Thus, no cost reduction is provided for medium-sized companies (more than 50 people and more than 10 Mio turnover) with resultant higher values of action!

 

EPO opposition vs. UPC revocation?

 

Some important differences of the UPC revocation are:

• Consideration of national prior rights at the UPC;
• Available at any time after grant (even during the 9-month opposition period);
• Art. 123(3) EPC as a nullity ground;
• Written, interim and oral proceedings are necessarily provided;
• UPC revocation is a front-loaded procedure;
• Any action requires a legitimate interest, as in any civil procedure (“strawman” in most cases not admissible);
• Much higher costs (20K€) which are to be borne by the losing party

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in June 2023.