16th draft UPC rules – the highlights


The 16th draft rules are now available, taking into account the numerous comments on the 15th draft.  Here are the main points to note:
  • Rule 5 (opt-out regime) has been significantly redrafted and is clearer in many respects including making it clear that opting out an EP will also opt out any SPC based upon it.
  • The language regime (rule 14) is still uncertain, with two options and a recommendation presented.
  • The scope of Preliminary Objections (rule 19) is still very limited.
  • There is no substantive change to rule 37 concerning bifurcation – no guidance is included in the new draft rules despite much lobbying.  The only change is to require the panel to give the reasons for its decision which may facilitate a procedural appeal against such a decision – see below.
  • The time for service of a Reply to a Defence to a revocation counterclaim (rule 51) is now two months, rather than one, thereby extending the length of the written procedure in many cases.
  • When, following a central division revocation action, the patentee commences a “retaliatory” infringement action in local or regional division rather than counterclaiming in the central division, this will no longer result in an automatic stay of the central division action (rule 70).  Instead, the stay will be mandatory only when the defendant to the “retaliatory” suit counterclaims for revocation in the local or regional division.  The implications of this change for tactical litigation in the UPC will need careful analysis, but it is certainly an improvement on the previous rule.
  • There is no change in rule 71.3 to the regime applying when a declaration of non-infringement is started in the central division, but a corresponding infringement suit is brought in a local or regional division: a stay will still be ordered as required by Art 33(6) UPC.
  • Rule 118 is more or less unchanged, despite much lobbying on this rule.  The only particularly significant change is that a stay may only be granted pending an EPO opposition if that decision is expected to be given rapidly (compliant with Art 33(10 UPCA).  (A similar amendment has been made to rule 295(a).)
  • A new section has been added empowering the Court to order security for costs (rules 158-159).
  • Rule 181 makes it clear that expert witnesses have an overriding duty to the Court to assist impartially and not to act as an advocate for any party.  (The same is true for Court experts under rule 186(7).
  • The protective letter system has been retained despite lobbying against this system (rule 207).
  • A somewhat more English style of balance of convenience and urgency regime has been included for preliminary injunctions.  Whilst the merits will still be more important, the Court shall to weigh up the balance of harm to the parties (rule 211.3) and have regard to “any unreasonable delay” (rule 211.4).  There are no eBay type provisions, however, either for preliminary injunctions or final injunctions.
  • The Committee can still not agree upon the right of the Court of Appeal to grant leave to appeal procedural matters such as decisions to bifurcate (rule 220.2).  This will mean the Court of Appeal will have to resolve this.
  • Representatives of parties will have a specific duty not to knowingly or negligently misrepresent cases or facts before the Court (rule 284).
  • There are no new provisions for amicus briefs.

Other commentary