UPC getting closer – just a ”Brexit” referendum away?

When the UK prime minister David Cameron won the 2015 general election he, due to demands from his own Conservative MP party and other parties, promised to hold a referendum on whether Great Britain was to stay or exit the EU membership. This referendum will take place on 23 June, 2016.
A current poll by YouGov® EU referendum tracker (17 May, 2016) indicate that 44% of the voters wants to stay in the EU, 40 % wants to leave and 12% are still not certain about how to vote.

The UK has for a long time been one of the three Contracting Member states that most patentees decide to validate their patents in. They are as such a very important piece of the puzzle for the Agreements on a Patent with Unitary effect and the Unified patent court to be able to enter into force. If the UK decides to stay, their preparations for ratifying the Agreements have also come a long way. For instance, the Houses of Parliament have approved draft legislation to amend the UK Patents Act to give effect to the Agreements of the UPC and the Unitary Patent. They have also made amendments to the Patent Rules, which will come into force when the UPC agreement comes into force. It is thus very likely that the current time schedule of early 2017 will stand for the entry into force of the UPC. It is not likely that the ratification will be completed before the referendum.

However, if the UK decides to leave the EU, the UPC and Unitary Patent system cannot start until the UK no longer is a member of the EU, unless the UPC Agreements is amended. The reason for this is that a non-EU member state cannot hold a position in the UPC regime. Italy will take the UK’s place as one of the three mandatory states, since it was the fourth most popular country for validation in 2012 (“in the year preceding the year in which the signature of the Agreement takes place”).

Further, the central division of the UPC, which is set out to be placed in London, will likely have to relocate. This means that the UPC Agreement will have to be amended, and possibly ratified again by the Contracting member states that have already ratified. The language regime that stipulates that the central division proceedings, for instance revocation actions, shall be in the language of the patent is not likely to change, and about 70% of the cases will still be held in English.

The Lisbon Treaty (Article 50) governs the membership of the EU and it states that “Any member state may decide to withdraw from the Union in accordance with its own constitutional requirements.” However, a withdrawal from the EU is still a complex situation and any country desiring to leave will for instance have to negotiate with each of the other 27 states about the terms of departure, a process that can last for up to two years. The European council and the parliament in Strasbourg will then have to ratify the severance terms. In reality the “exit” may take more than two years.

With all of this taken into account, it is extremely difficult to predict when the UPC and the Patent with Unitary Effect may enter into force should we face a Brexit. In worst case, a delay of several years may be expected, unless a rapid re-negotiation and re-drafting of the current Agreements for the UPC and the Unitary Patent package can take place and be ratified accordingly.

Recruitment of Judges to the UPC during May

According to the Report of the 15th Preparatory Committee meeting of the Unified Patent Court (UPC), the recruitment of Judges will start during the beginning of May. [1]

The Court of First Instance will always have a multinational composition of the panel of judges. The panel shall comprise three judges, unless one of the parties requests that the President of the Court allocates an additional technically qualified judge from a pool of judges, in which case the panel is extended to four judges. The parties may also agree that the case is to be head by only one legally qualified judge. The panels will always be chaired by a legally qualified judge.

In the central division, i.e. Paris, London and Munich, any panel will consist of two legally qualified judges who are nationals of different Contracting Member (CM) states, and one technically qualified judge from the Pool of judges. (the “Pool”)

The local divisions expected to handle less than 50 cases annually, will have one legally qualified judge from the CM state where the local division is placed, and two legally qualified judges who are not nationals of that CM state. These judges will be allocated from the Pool of Judges. If the local division is expected to handle more than 50 cases annually, the panel will instead comprise two legally qualified judges who are nationals of that CM state, and one who is allocated from the Pool. That third judge will serve this local division on a long term basis in order to ensure an efficient functioning of the Court. If the Court is a regional division, two legally qualified judges will be selected from the CM states concern, and one from the Pool.

The technically qualified judge will always be selected by their experience in the relevant field of technology.

The judges now to be recruited shall ensure the highest standards of competence and proven experience in the field of patent litigation, and the legally qualified judges must have qualifications required for appointment to judicial offices in a CM state. The technically qualified judges must have a university degree and proven expertise in a field of technology, they must also have proven knowledge of civil law and procedure relevant to patent litigation.

The Pool will comprise all legally and technically qualified judges, who are full-time or part-time judges of the Court. There will be at least one technically qualified judge per field of technology. The allocation of judges from the Pool will be based on legal or technical skills, linguistic skills and relevant experience.

All judges to be recruited will receive proper training at a training facility set up in Budapest. The training framework will also focus on internships in national courts or divisions of the UPC, and improvement of linguistic skills, technical aspects of patent law. For the technically qualified judges the knowledge in civil procedure will of course be given a special focus.

a special focus.

If Plant and Page stole “Stairway to Heaven”, why wait 45 years to take action?

On May 10 a trial will start in a district court in Los Angeles. A jury will decide whether Robert Plant and Jimmy Page of Led Zeppelin copied the opening chords of their classic song “Stairway to Heaven” from “Taurus” of Spirit. Judge Klausner holds that the songs are similar enough to allow the case of copyright infringement to be tried.

The composer of “Taurus”, Randy Wolfe, died in 1997 and the lawsuit has been filed by a trustee of the estate. It is argued that Plant and Page were inspired by the song on a joint Led Zeppelin and Spirit tour in 1968 and 1969.

The defense is likely to be based upon a claim that the chord progressions have been used by composers well before “Taurus” was written in 1967, as well as argumentation that there in fact is an overall difference between the two songs. Personally, I think there may be some merit to this, see (and listen) for instance https://www.youtube.com/watch?v=JcYeLRI76No.

I also reflect on the rather strange fact that “Stairway to Heaven” was written in 1971 and that it actually is possible to wait 45 years to file a copyright infringement claim.

There are several examples in different legislations and in doctrine to the fact that if you are bound by your passive behavior. For instance, sometimes in civil law a party that does not speak up within reasonable time will be held to have accepted certain conditions, whether or not he or she agrees to those conditions.

For me, the rule of passivity frequently comes up in trademark conflict discussions.  Article 54.1 of the EU Trademark Directive states that acquiescence or passivity limits your ability as a trademark owner to apply for invalidity or to oppose a later trademark.

For this rule to apply, the following needs to be fulfilled:

  • The younger mark has been used in the territory where the older trademark is protected.
  • The trademark has been used in more than five successive years in the relevant territory.
  • The owner of the older trademark has been aware of the use of the younger mark for more than five years.
  • The owner of the older trademark has been passive and not acted against the use of the younger mark.
  • The younger mark was not applied for in bad faith.

Here, it should be noted that the holder of the later trademark has the burden of evidence to the first four bullet points above, whereas the holder of the older right has the burden of evidence to the last bullet point.

A period of five successive years is stated as a relevant period of time. I think this period is generous enough for the owner of the older trademark to evaluate the situation from different perspectives and to prepare and file a claim.  There is really no just reason why a right holder should be allowed to wait around for decades before deciding to notify a good faith party that they have been committing infringement all that time.

Personally, I feel for Jimmy Page and Robert Plant and think that there is a moral right in the old Italian proverb; “silence means consent”.