The Unitary Patent at the AIPPI Congress held in Milan

29.09.2016

By Agueda Bondia, European Patent Attorney

This year the 2016 AIPPI World Congress was held in Milan from 16 to 20 September and was well attended by industrial and intellectual property professionals, which included Elia Sugrañes, head of the trademark department, and Agueda Bondia, agent of the patent department, who represented our firm.

The morning session held on the last day of the 2016 AIPPI World Congress in Milan sparked great interest among the participants given the presentation of a mock trial before the Unified Patent Court UPC, which undoubtedly increased due to the uncertainty caused by BREXIT regarding the future of the entry into force of the Unitary Patent UP which appeared to be very close after long years of negotiation.

Currently, 25 of the 28 European Union member states have agreed to participate in the new UP system, ratifying the corresponding agreement. However, its entry into force depends on its ratification in at least 13 member states, among which include France, Germany and the United Kingdom. Thus, as a result of the United Kingdom’s decision by vote on 23 June to leave the EU, the future of the UP and the UPC is uncertain and will definitely involve, at the very least, a delay in its entry into force.

It is worth noting that the unitary patent system will entail a single patent title for all member states of the European Union that join the new system, and the UPC will be the entity that resolves disputes involving the unitary patents, unlike the national courts which rule on disputes related to European patents (EP). The UPC will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance, in turn, will comprise a central Division and several regional and local Divisions. Specifically, the central Division, with headquarters in Paris, will have offices in Munich and London.

Before the mock trial, a debate was held on the implications of BREXIT for the UPC, in which important representatives of European Union institutions, the European Patent Office and Industrial Property companies and professionals participated. In short, the debate focused on the key issue as to whether the United Kingdom would ratify the agreement and when, or if not, what would happen to the UPC project. Some of the participants made remarks that strongly expressed their opinion that not only should the UK ratify the agreement, but it should do so quickly since by failing to do so, the rest of Europe would not wait and the UPC would enter into force without the UK, modifying the UPC Agreement with “small technical changes”. There was some consensus on the fact that all participants wanted the Unitary Patent system to successfully move forward and that the industry hoped that the UK would be a part of the system. The worst scenario would be one in which the UK joins the agreement to then leave it when everything is already set up and underway. Opinions coming from the UK stated that at least it was better that its government be in a position to listen and reflect, instead of deciding to immediately abandon the project. The position of important companies that signed a letter in favour of the advancement of the UP system and the UPC, and preferably with the participation of the UK, was also represented.

As for the mock trial held before the UPC, the judges and lawyers worked on a case in which they had to decide whether to grant cautionary measures to the Italian division of the UPC in the context of preparations for the launch of a biosimilar product. They had to consider the existence of two European patents belonging to the plaintiff, one for an administration system and the other for a formulation of a fictitious protein.  The patent of the dose regime had overcome opposition before the Opposition Division of the European Patent Office and actions of first instance revocation in Germany and the United Kingdom that were carried out by another party, even though it was revoked in France. It is currently in effect in several European countries. The patent of the formulation also overcame an opposition process before the Opposition Division of the European Patent Office, which was filed by three opponents. During that time, the case was pending a hearing before the TBA (Technical Board of Appeal) of the European Patent Office, and the patent was in effect in several European countries. The defendant (manufacturer of the biosimilar product), who has undertaken national actions to revoke the two patents in Italy, produced in Italy and intended to sell those products in several countries in about two months. The plaintiff anticipated a 25% decrease in the price of the product in the market, although the defendant claimed that it was only going to sell its product at a price that was 10% cheaper.

The first instance proceedings addressed several issues, among them jurisdiction, validity and infringement, proof for cautionary measures and whether compensation under cross-undertaking of damages should be granted.

After sound and dynamic remarks by the lawyers of both parties and inquiries by the judges, the UPC granted the cautionary measure requested, the scope of which established that it covered all of the manufacturing activities in any member state in which the patent is in effect. The decision was based on the fact that a national action for revocation could not undermine the jurisdiction of the UPC to grant cautionary measures. As discussed, Art. 35 of Brussels I Recast Regulation allows the UPC to grant cautionary measures because the UPC is treated as a member state.

During the coffee break that followed, the defendant filed an appeal before the Court of Appeal of the UPC, headed by the Chief Judge Marina Tavassi of Milan (who was recently appointed to the Italian Court of Appeal in real life). This time the issue focused on whether new proof could be accepted, in particular evidence that showed that the expert who served as a witness for the plaintiff had been unfair when giving his testimony or providing evidence, omitting that a disclosure against the inventive step of the invention related to the administration system had taken place at a conference held before the priority date of one of the patents. The Judge decided to reject acceptance of the evidence for a number of reasons, alleging that it would not be a deciding factor in the dispute of the case since it only refers to one of the patents in question.

This mock trial was certainly a great success for the Organisation and it provided first-hand experience, although fictitious, of how rulings before first and second instances could be carried out if the UPC finally becomes a reality.