Participants: Paul England, Taylor & Wessing (Moderator); Johannes Karcher, Head of Task Force, EU-Patent and Unified Patent Court, Federal Ministry of Justice and Consumer Protection, Berlin; Coordinator of the Legal Working Group of the Preparatory Committee for the establishment of the Unified Patent Court (Speaker); Mr. Justice Colin Birss, Chancery Division, High Court, London (Panelist); Sir Robin Jacob, University College, London (Panelist)

The Unified Patent Court is rapidly becoming a reality, and is expected to be in operation sometime in 2017.

Mr. Karcher opened the discussion with the topic of injunctions, including the court’s discretion in granting an injunction and whether there is an “injunction gap.” There will be two types of injunction: (i) provisional measures, specified in Article 62 of the Unified Patent Court Agreement (UPCA), and (ii) permanent injunctions, in Article 63. With the provisional measures, there is an alleged infringement and some judicial degree of certainty. The procedure is summary. With a permanent injunction, the court finds that there has been infringement. There is a full procedure, e.g. with evidence, witnesses, and experts.

But how much discretion should the court have under Article 62, where its action could later be reversed? The rules provide that “The court has the discretion to weigh the interests of the parties, and it shall, in particular, take account of the potential harm for either side which may result from granting or refusing to grant the injunction.” That is, it has broad discretion so as to avoid doing permanent harm. By contrast, under Article 63 there is no weighing of the parties’ interests, although the court could still refuse to grant the injunction.

There is a possible injunction gap in that an injunction could issue prior to any validity determination. There are, however, various safeguards in place to bridge any such gap. For example, the court can always stay the infringement proceedings if the invalidity procedure has not terminated. Of course, when there is a decision on infringement and the validity has not yet been decided, it is always conditional, on the condition that the patent is not revoked. The infringement decision would cease to be enforceable if there is an invalidity decision.

The participants discussed scenarios relating to when a judge would bifurcate a proceeding between infringement and validity issues, with Sir Robin Jacob taking the position that it will not happen very often. Mr. Justice Birss argued that no one really knows what will happen with this new court, though he too finally agreed that there most likely will not be much bifurcation (though he noted that because it will happen sometimes, an examination of the “gap” was important.

Given the array of complex decisions required of the court, a question arose regarding judges’ qualifications. There followed an extensive discussion of how legal judges would be trained and technical judges would be sourced. Also, Mr. Karcher offered the assurance that, at least initially, experienced patent judges (sitting on current cases, on national European patents) would serve on a part-time basis and would thus be highly qualified. However, there would still be numerous issues to consider as, for example in Sir Robin’s words, “How many judges should be appointed at the beginning? Should we appoint lots? They have to be paid. Are there going to be lots of part-time ones? There are problems about part-time judges who are the legal judges. The problem about them is that you have to have an exception for a part-time judge who is a lawyer in practice. It can be made on a case-by-case basis. The application form that eventually comes out will say: “Do you want to be a part-time legal judge? Will you be asking for an exemption . . . .?”

Still more questions arose about forum shopping, in that people with poor cases might seek out inexperienced judges. In response, Mr. Justice Birss noted that “the way to fix it is to make sure that the system is clever enough to be able to take judges who are the experienced ones from states where there is patent experience and make sure that they are sitting as part of the panel hearing those cases.” He added, however, that “I do not know how that is going to work.” Questioners followed up by enquiring how judges would actually be selected for particular panels. Mr. Karcher addressed some of the mechanisms that would be employed to ensure effective judicial panels.

There were still more questions about the appointment of judges, the number of panels they would sit on, and the amount of work; none of these could be answered definitively. Finally, there were questions regarding how long cases would take where there were complex damages involved; the answer was that proceedings would be sufficiently long to deal with the issues.

Fordham IP Institute