A test-drive for the Unified Patent Court

This Kat has had his share of reservations about the Unified Patent Court system which has been foist on the European Union's patent fraternity and which has been met by a wide spectrum of responses, from the ecstatic to the apoplectic. However, he must confess that, since the system is not yet up and running, all his anxieties have a somewhat hypothetical flavour to them.  He therefore awards full marks for enterprise to his friends at Bristows, who have had a jolly good to at conducting a real-time test drive of the new system.  This is the first report on their experience, masterminded by Alan Johnson and Alexandria Palamountain:

Testing out the real UPC system

Since the announcement that the Unified Patent Court would come into operation, a number of moots have been conducted so as to replicate a trial under UPC rules [Bristows note: the proceedings are being conducted under the 16^th draft rules, although if any significant changes appear in the 17^th draft and the final version of the rules, these changes will be taken into account.  The parties are instructed not only to plead their cases, adduce such evidence as they require (as allowed by the court), but also to keep a note of their thought processes as the litigation proceeds.  In this way, the considerations which are taken into account can be captured and points on interpretation of the rules perhaps not otherwise considered can be identified].  

Here's a scene from real-life patent litigation
that won't be replicated in a real-time exercise:
tracking down that elusive expert witness ...

Instructive as the UPC rules are, one is left with no real sense of how an action under UPC rules would unfold, or the tactics which would be used by seasoned practitioners in the new court to advance their clients’ interests.  For this reason, Bristows is running a real time set of mock UPC proceedings.  The aim is simple: to test out the system from start to finish (at first instance) over a one year period and see what two competing teams actually do in as near to real-life conditions as is possible [sounds like a great basis for a computer game, thinks Merpel, who is wondering what to call it ...].  A scenario was set up so that the proceedings could be commenced in the London local division, and only two unrealistic (but necessary) ground rules were put in place.  First: the parties would not be allowed to invoke Article 83(1) and commence national litigation to circumvent the UPC.  Secondly: they would not be allowed to settle.

A huge team of around 25 lawyers is involved

Including the judges, legal teams, and witnesses, all 11 patent litigation partners and 14 of the group’s associates are involved in the proceedings.

A rare sight: young IP lawyers queue up
to volunteer for UPC real-time training ...

The process was started at the beginning of March 2014, with volunteers recruited from Bristows’ patent litigation group.  Partner Alan Johnson created the scenario, acts as President of the Court of First Instance, and oversees the parties’ witnesses so that unduly biased evidence is not created for use in the proceedings.  Each legal team comprises two partners and three associates representing fictitious parties in the pharma sector litigating existing European patents and SPCs not opted out of the system.  Alan provided a set of common facts and documents to both teams but, as in real life, each side was also given its own particular facts, documents and instructions.  These included potential witnesses (expert and of fact played by other partners and associates in the group), as well as other information which might colour their potential tactics.

The proceedings were planned to be commenced no earlier than May 2014, thus allowing two months’ preparation time.  Partners Philip Westmacott and Edward Nodder were earmarked as the local judges, and senior French qualified associate, Vanessa Rieu as the third legal judge.  Partner Dominic Adair was stood ready to be called in as technical judge if required.

What happened in May when proceedings were commenced?

French patent judges like a little style and
formality when it comes to their attire

In the scenario, the parties had exchanged pre-action correspondence.  The patentee had let it be known that it had reached the conclusion that litigation was necessary and stated an intention to sue in the London local division.  Before the patentee could sue, however, the potential defendant decided to take the initiative and start its own revocation proceedings, in the central division.  Why it decided it would prefer a case in the central division than in a local division will doubtless be explained later, but the immediate consequence was that a different panel of judges was appointed, and perhaps importantly, the Judge Rapporteur appointed was Judge Rieu, a French judge, rather than an English judge as would inevitably have been the case had the action been started in the London local division.  Perhaps the potential defendant did not want an English Judge Rapporteur who might be more instinctively inclined to permit disclosure and fact and expert evidence? 

Forum shopping & Central Division revocation actions

In some ways this development is not dissimilar to what presently happens on the international stage, with a patentee starting infringement proceedings in one country and retaliatory revocation suits being commenced by the opposing party in another.  In the current system both (or all as the case may be) sets of proceedings may continue side by side.  In the UPC this should not happen, but forum shopping within UPC divisions is predictable, and what has happened already in this case is just one variant of it –- in other scenarios one can easily foresee patentees forum shopping as between various local and regional divisions.  But from this example we can already see from this one simple lesson:  if a patent owner so much as gives an indication that it may wish to sue, it may face a central division revocation action.  Will potential defendants, fearful of being sued in a local division they may feel potentially inconvenient or less favourable, take the option of starting in the central division?  Will this lead potential claimants to “shoot first, negotiate later” instead of tipping off opponents?  Such a tactic would also allow patent owners to catch their opponents potentially unprepared, and hence give themselves another advantage.  If so, this is hardly the most desirable of consequences of the UPC system.

Coming up next…

We now wait to see how the patentee will react.  It has an interesting choice:  will it counterclaim in the central division; or will it instead start its own infringement proceedings in the London local division as it had planned to do?  In making this decision, how will it assess the procedural rule governing this situation (rule 70)?  If the patentee does start an infringement claim in the London local division will the “infringer” counterclaim for revocation in the local division, or leave the two sets of proceedings to continue separately – de factobifurcation without any court decision?  Were that to happen, would the President step in to join the two actions together so as to save court time and judicial manpower?

We will report on these and other developments as they occur over the coming months.

As a long-time educator, this Kat is fascinated not only by the exercise as it relates to the UPC, but by the potential for IP games as a means of training in other areas, such as OHIM Community trade mark mediations or FRAND licence negotiation.  He'd love to hear from any readers, regardless of their profession and jurisdiction, as to how they rate these exercises.