While Unitary Patents are mandatorily subject to proceedings and lawsuits before the Unified Patent Court (Art 3 (a) UPCA), this is not the case for classical EP patents (cf. Art 3 (c), (d) UPCA). For EP patents and applications pending at the date of entry into force of the Agreement, Article 83 UPCA defines a rather liberal transitional scheme allowing EP patent proprietors and applicants to make use of the present European post-grant patent system for many years to come. This transitional scheme consists of two basic elements, a transitional period and an opt-out mechanism.

Transitional period.  According to Art 83 (1), actions for infringement or revocation may still be brought before national courts during a transitional period of seven years after the date of entry into force of the Agreement.

Art 83 (5) allows for prolonging the transitional period to a total of fourteen years if, based on broad consultations and a related survey to be carried out five years after the Agreement entered into force, the Administrative Committee (Art 12 UPCA) should gain the impression that system users still prefer  the present system and avoid the new system. 

Opting out and opting back in. Initially, all pending applications and granted EP and Unitary Patents are subject to the new system. However, according to Art 83 (3), applicants and proprietors of EP patents (but not proprietors of Unitary Patents) can opt out “from the exclusive competence of the Court” during the transitional period.

As some observers have asked whether opting out from “exclusive competence” means opting out from the agreement as a whole, we tend to think that Art 32 sufficiently defines this term, as it provides an exhaustive lists of those legal actions for which the UPC has “exclusive competence” and which will fall back into the competence of national jurisdictions upon opt-out, especially

• actions for infringements, including counterclaims concerning licences; 
• actions for declarations of non-infringement;
• actions for provisional and protective measures and injunctions; 
• actions for revocation and declaration of invalidity;
• counterclaims for revocation of patents;
• actions for damages or compensation derived from the provisional protection;
• actions relating to the prior use rights. 

Complementary thereto, Art 83 (4) enables patent applicants and proprietors to withdraw opt-out anytime, i.e. even after the transitional period has expired.

If the transitional period is still running after withdrawal of opt-out, there is no reason why another opt-out should not be possible. If the transitional period, however, expired, any withdrawal of out-out will be final, because another opt-out will not be possible any more.

Limitations of opting out and in. By the limitation “unless an action has already been brought before the Court/a national court“, Art 83 (3) and (4) grant the right to request/withdraw opt-out only for such applications and EP patents that are not involved in a legal action before a competent court. As soon as an infringement, revocation or other action given in Art 32 (1) is pending, the applicant/proprietor is stuck with that jurisdiction.

This opens tactical options especially to possible infringers, as a revocation action filed with the UPC will block the patent proprietor from opting out and by this forcing the infringer to revoke the patent separately in each validated state.

That is, if an applicant or EP patent proprietor wants to opt out, it is recommended to do so as soon as possible  in order to prevent third-parties from filing an action under the Agreement and blocking opting out.     

Temporal effects. An opt-out which has been requested at a certain point during the transitional period will be effective until either the opt-out is actively withdrawn or the patent expires.

That is, the present national post-grant patent jurisdictions will remain available for the full lifetime of all applications pending or EP patents being in force at the end of the transitional period, which will last between seven and fourteen years as of entering into effect of the Agreement.

If we may assume that the Agreement enters into force in 2014, the present national patent jurisdictions will continue to handle patent cases until somewhen between 2040 and 2047, depending on the duration of the transitional period.

Practical aspects. Opt-out and the withdrawal thereof shall be notified to the Registry until one month before the end of the transitional period and will take effect upon entry into the register. Rule 5 (4) of the Rules of Procedure emphasises this point by clarifying that any legal action pending before entry of an opt-out/withdrawal into the register will render such request ineffective. 

Rule 5 RoP regulates further formal aspects of lodging a request for opt-out and withdrawal of opt-out. For instnace, Rule 5 (3), (5), and (6) require that an opt-out or withdrawal shall be entered into the register and notification of the EPO of such entries as soon as practically possible.

Now, the Permanent Representatives Committee (COREPER) is invited to take note:

• of the agreed position of the Signatory States regarding the Preparatory Committee of the Agreement on a Unified Patent Court, as set out in the paper contained in the Annex to Document 7265/13 and in the cover note thereof;
• of the intention of the Presidency to convene the inaugural meeting of the Preparatory Committee on 26 March 2013 in Brussels; and
• that Council, at the appropriate level, will be kept informed of progress of the work of the Preparatory Committee when needed.

A list of four main tasks to be elaborated in groups with project teams can be identified:

• Legal framework,
• Financial aspects,
• IT & Facilities, and
• Human resources & Training.

According to Annex I of the Annex to Document 7265/13, the Preparatory Committee should ensure appropriate involvement of and regular contacts with interested circles. Proposals and other documents which have reached an appropriate stage should be made available to the public, unless the Preparatory Committee decides otherwise in a particular case. The Preparatory Committee should when needed hold consultations with interested circles (in particular judges, industry representatives, lawyers, patent attorneys and other interested parties). The first issue on which the users need to be consulted by the Preparatory Committee are the draft rules of procedure. Furthermore, signatory States may of their own motion hold consultations at national level. Finally, the Preparatory Committee should decide on the admittance of observers to its meetings.

The preliminary list of tasks currently is detailed as follows:

Area 1. Legal framework

Proposals should be prepared for:

• Rules relating to the procedures before the UPC
  • Rules of Procedure of the UPC
  • Rules governing the Registry and the sub-registries
  • Rules governing the Registrar’s service
• Rules on legal aid.
• Rules on court fees.
• Rules of Procedure of the Administrative, Budget and Advisory Committees
• Rules relating to mediation and arbitration
• Rules on the litigation certificate for patent attorneys.

Area 2. Financial aspects

Proposals should be prepared for the

• level of Court fees
• level of legal aid
• schedule for Member States’ proportional contribution to a Member State that has paid damages to a party in case of violation of Union law by the UPC
• Financial Regulations
• first budget of the UPC
• salary schemes of the Presidents (CoA, CFI), the judges (including part-time judges),
• the Registrar and Deputy-Registrar and staff of the UPC and
• pension arrangements and social security schemes.

Area 3. IT and Facilities

Software should be developed and tested with a view to

• set up an electronic filing & case management system which must
  • be fully accessible on-line for judges and other staff of the UPC, and
  • enable secure exchange of documents and information both internally (between seats, sections, divisions, panels, judges and staff of the Registry and sub-registries) and
• externally (between the UPC and parties to proceedings, who should be able to file submissions and documents in electronic form),
• enable public on-line inspection of certain parts of the files and
• design a comprehensive court website.

Area 4. Human resources and training

As regards the training of judges, the Draft Declaration already provides that a training plan for judges must be set up as soon as possible by the Preparatory Committee. Later on, preparations should be made for setting up the permanent Training framework for Judges provided for by Article 19(1) UPC Agreement.

Preparations should in addition be made for the election of the members of the Advisory Committee and the selection of the first judges. Thoughts should also be given to the establishment of the “Pool of Judges” and the “regional list of judges”

Proposals for staff regulations of officials and other servants of the UPC should also be prepared.

Finally, preparations must be made for drawing up the following lists

• List of European Patent Attorneys entitled to represent parties before the Court.
• List of mediators and arbitrators
• List of experts

Concerning representation by patent attorneys, see our previous post here.

Concerning the IT system of the Court, see our previous post here.

U.S. President Obama signs the AIA into law on 16 September, 2011

The final package of the Leahy-Smith America Invents Act (H.R.1249, pdf) will enter into force on 16 March 2013 (for a list of amendments and their effective dates, see here). By this date, the most significant amendments of the new Act will enter into force, namely the transformation from the traditional first-to-invent regime to the new first-inventor-to-file regime.

Besides reducing the USPTO’s backlog of approx. 680.000 patent applications and improving patent quality, the main objective of the America Invents Act is to harmonise the US patent system better with international patent law standards and by that facilitate second filings of US applicants in foreign jurisdictions.

This is indeed a brilliant idea, not only for US applicants but also for European applicants and practitioners, as it will align the US system closer with the European patent system. However, event for those legal instruments that are clearly adapted to the European point of view, important differences remain. Some of those tiny differences that may have a huge impacts on practice are outlined below: 

1.  Grace period (effective as of 16 Mar 2013). The traditional 12-months US grace period has survived the transition from first-to-invent to first-to-file but had to be adapted. While the classical first-to-file grace period is designed like the 6-months grace period according to German utility model law (§ 3 (1) GbmG) which excludes any disclosure by the inventor (an ‘own disclosure’) within the grace period from prior art, the new US grace period rather is a mixture between the old first-to invent grace period and the classical first-to-file grace period, as required by new 35 USC § 102(b):

A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–

(a)  the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(b)  the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

This provision does not only exclude disclosure made by the inventor within the grace period from prior art but also any (identical) third-party disclosure between such disclosure by the inventor and the effective filing date.

That is, under new 35 USC § 102(b) a disclosure by the inventor has the effect of both an own disclosure under the classical first-to-file grace period (paragraph a) and possession of the invention by the  inventor before the actual filing date under the old first-to-invent grace period (paragraph b).

2.  Prior public use (effective as of 16 Mar 2013). While old 35 USC § 102 (a) (1) excluded an invention from patent protection based on prior public use only if  ”the invention was  known or used by others in this country“, new § 102 (a) (1) implements an absolute novelty regime (like Art. 54 (2) EPC) according to which the place where a prior art reference was made public is irrelevant:

(a)  A person shall be entitled to a patent unless –

(1)  the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

(2)  [...]

3.  Intervening rights (effective as of 16 Mar 2013). The rules for intervening rights have been moved from old 35 USC § 102 (e) to new § 102 (a) (2):

(a)  A person shall be entitled to a patent unless –

(1)  [...]

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

This paragraph determines the effective date of an intervening right, i.e. a US application or US patent that has been filed before but published after the effective filing date of a US application under examination. European intervening rights are defined in Art 54 (3) EPC as “European patent applications as filed, the dates of filing of which are prior to the [effective filing date of an European application under examination] and which were published on or after that date“.

While old § 102 (e) required that an intervening right is “filed in the United States before the invention” according to the Hilmer doctrine (based on the 1966 case In re Hilmer) the notion of “effective filing date” of new § 102(a) (2) covers foreign priority filings as well.

Consequently, an intervening US application based on a German priority application will in future be considered as prior art, whereas up to now such applications have been simply excluded from prior art because they have not been available upon the filing date of an application under examination and the priority has not been “filed in the United States”.

As the sheer definition of an intervening right is basically comparable to what is required by Art 54 (3) EPC, the legal effects thereof are different in the two jurisdictions. This is because new § 102 (a) (2) continues to consider US intervening rights as regular prior art relevant for both novelty and obviousness, whereas European intervening rights are only relevant for novelty but cannot be considered with respect to inventive step.

4.  Usurpation and derivation (effective as of 16 Mar 2013, faq). For new patent appliactions filed as of 16 March 2013 under the new first-inventor-to-file regime, inter-partes interference proceedings are not required any more, as there are no conflicts about the date of invention as the crucial date of an application rather is its (effective) filing date. Instead, the new derivation proceedings were established to determine, upon petition, whether an applicant has derived the invention from the petitioner, who then has the right to the patent instead of the applicant.

The new derivation procedure comes in to shapes, as a trial proceedings before the Patent Trial and Appeal Board (PTAB) according to 35 USC § 135 (a) if the petitioner (i.e. the person who claims usurpation) has a pending patent application or as a civil action before a district court according to 35 USC § 291 (a) if both parties own a patent. The term for initiating derivation proceedings is one year as of publication of the usurper’s derived application or patent. The new post-grant and inter-partes review do not provide any measured to handle derviation issues.

If the PTAB or court considers the petition convincing, claims of the usurper’s derived application/patent may be cancelled or finally refused or inventorship of such application/patent may be corrected.

The approach in Europe/Germany is different not only to the extent that a person claiming usurpation does not have to have an application or own a patent for initiating derivation proceedings.

By a civil action for vindication according to Section 8 of the German patent act (§ 8 PatG) the plaintiff can seek a transfer of a defendant’s derived application/patent. In contrast to 35 USC § 135 and § 291, section 8 PatG requires the lawsuit to be initiated until two years after grant of the patent.

According to Art 61 (1) EPC, a final decision of a national court that a European patent application has been filed by a non-entitled person provides the options to the entitled inventor to either continue prosecuting the application, file a new application, or request refusal of the application.

Besides such civil court actions, German patent law also provides the option to revoke a patent due to usupation in opposition proceedings or an invalidity action (sections 21 (1) No. 3 and 22 (1) PatG). If such opposition is successful, the entitled inventor may file a new patent application in Germany (section 7 (2) PatG) which will be granted the filing date of the opposed patent.

5.  Post Grant Review (effective as of 16 Sep 2012, faq, info). Comparable to European Opposition Proceedings (cf. Art 99-105 EPC) in principle, a post grant review (PFR) can be requested for patents having a priority of 16 March 2013 or later (i.e. for patent underfalling the first-to-file regime) within nine months as of the date of grant of a patent. Other than in the new Inter-Partes Review (and the old Inter-Partes Reexamination) where a patent can (could) be challenged based on written prior art only, the grounds based on which the validity of a patent can be challenged in a PGR are those of 35 USC § 282 (b), paragraphs (2) and (3), namely

• lack of patent subject-matter eligibility,
• lack of novelty or obviousness,
• lack of written description, lack of enablement, or indefiniteness.

The grounds of opposition available in the European Opposition Proceedings (Art 100 EPC) are basically comparable:

• lack of patent subject-matter eligibility,
• lack of novelty or lack of inventive step,
• lack of sufficiently clear and complete disclosure to carry out the invention,
• new matter as compared to the original disclosure.

An important difference between US Post Grant Review and European Opposition, however, is the level of evidence required to initiate the proceedings, i.e. the admissibility of the petition or request. While for instituting a PGR the petitioner must show that it is more likely than not that at least one claim is unpatentable, an Opposition submitted with the EPO is admissible and will thus be handled by the Board already if the opponent sufficiently substantiates the grounds of opposition raised.

What is definitely not comparable are the costs. While the office fees to initiate a Post Grant Review were initially set to 35.800 USD (see USPTO table) they have now been reduced to 12.000 USD for the first 20 claims and 250 USD for each additional claim (see final rules, table 4, p. 4223-4), the European opposition fees are as little as 745 EUR (see EPO fees), independent on the number of claims.

6.  Covered Business Methods Review (effective as of 16 Sep 2012, faq, info). For a period of eight years as of 16 September 2012, any business method patent can be challenged under the CBM Review program by a Post Grant Review, regardless of the date of filing or date of patent, as soon as it is enforced against an accused infringer.

The defendant can thus challenge the patent in a CBM review even if the patent has been granted more than nine months ago. The respective petition, however, must be filed within one year as of initiation of the infringement suit. One must not be a prophet to assume that if the validity of a CBM patent is challenged under this program, patent subject-matter eligibility will play a central role.

But how is it determined whether or not a patent really relates to a covered business method and thus falls under the program? This question is answered now by 37 CFR § 42.301 as follows:

(a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

The latter definition is surprisingly similar to what European case law (and German case law) has developed to define “methods for performing mental acts, playing games or doing business, and programs for computers [...] as such” according to Art. 52 (2), (3) EPC (and § 1 (3), (4) PatG).

According to the new law a “technological invention” requires a claim comprising a “technological feature that is novel and unobvious” to be excluded from CBM review. A claim comprising only known or obvious technological features will thus be subject to a CBM review.

European patent practitioners might feel strongly reminded of the EPO’s established Comvik approach (cf. T 641/00, 2002), according to which non-technical features cannot contribute to novelty and inventive step. From this finding one may roughly conclude that the CBM review program covers exactly those US patents whose inventions would not have been patentable in Europe anyway. Is this another – albeit unintentional – convergence between US and European patent law?

The first case of the newly established Patent Trial and Appeal Board (PTAB) under the CBM program, instituted on 9 Jan 2013, was SAP America, Inc. v. Versata Development Group, Inc. (CBM 2012-00001) based on US 6,553,350 related to “pricing products in multi-level product and organizational groups“. Regarding the question of whether or not the subject-matter relates to a technological invention, the PTAB argued that this was not the case as

no specific, unconventional software, computer equipment, tools or processing capabilities are required [and that the] invention may be implemented in any type of computer system or programming or processing environment.

The first infringement lawsuit stayed for a CBM review (CBM2013-00005) is Markets-Alert Pty. Ltd v. Bloomberg Finance L.L. et al. before the Delaware District Court (1:12-CV-00783-GMS) based on US 7,941,357 (trading system).

7.  Third party submissions (effective as of 16 Sep 2012, faq, info). As replacement of the ended pilot programs Peer-to-Patent and Peer Review and very similar to Art. 115 EPC, the AIA has introduced the option for third parties and interested members of the public to submit relevant prior art and related observations during the examination proceedings – however, only prior to issuance of the first Office Action on the merits.

8.  Supplemental examination (effective as of 16 Sep 2012, faq, info). Comparable to the European limitation proceedings under  Art 105a EPC, a patent proprietor can request supplemental examination of his patent in case relevant prior art is revealed only after the grant. The purpose of such request may be to strengthen the patent’s validity or to heal inequitable conduct. Contrary to European limitation proceedings, where the submitted claims are only examined as to whether they really limit the granted scope of protection, supplemental examination will be a real examination proceedings on the merits, albeit limited to the newly submitted prior art.

9.  Prior use rights (effective as of 16 Sep 2011, info).Formerly, prior use rights were an admissible defensive measure only in infringement lawsuits based on a business method patents. This measure, which was introduced in reaction to the Federal Ciruit’s State Street Bank decision in 1999 in order to protect such businesses that used a patented business method as a trade secret, could be raised if the accused infringer used the respective business method more than one year before the filing date of the enforced patent.

The AIA extended the availability of the prior use rights defense to all kinds of patents, 35 USC § 273 (a):

[...] subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention against the person [...].

Except for the one-year-term and some minor differences (e.g. the university exception) this new legal institute is essentially comparable with the prior use rights we know in Europe, e.g. as implemented in section 12 of the German Patent Act or Section 64 of the UK Patents Act.

10.  Patent marking (effective as of  16 Sep 2011). In order to reduce the number of false marking lawsuits, the right to file a civil action for false  patent marking has been limited from “any person” to “a person who has suffered a competitive injury”. That is, false marking is now regarded as an act of unfair competition with the effect that private persons and uninvolved entities cannot anymore initiate a legal action for false marking.

This is basically the situation in Germany, where § 8 (3) UWG (Act against Unfair Competition) grants the right to sue to affected competitors and certain associations only.

UPC Agreement signing ceremony [UPDATE]

Today, on February 19, 2013 at 1415h, the signing ceremony of the International Agreement on the establishment of the Unified Patent Court will take has taken place in the Justus Lipsius building of the Council of the European Union located in Brussels.

The event can be followed by video streaming:

http://video.consilium.europa.eu

As far as we know, 22 countries are today going to sign the Agreement (in brackets: year of accession to EU or predecessor organisations):

1. Austria (1995),
2. Belgium (1952),
3. Cyprus (2004),
4. Denmark (1973),
5. Estonia (2004),
6. Finland (1995),
7. France (1952),
8. Germany (1952),
9. Greece (1981),
10. Hungary (2004),
11. Ireland (1973),
12. Italy (1952),
13. Latvia (2004),
14. Lithuania (2004),
15. Luxembourg (1952),
16. Malta (2004),
17. Netherlands (1952),
18. Portugal (1986),
19. Romania (2007),
20. Slovakia (2004),
21. Sweden (1995), and
22. United Kingdom (1973)

According to Ian Wishart of Europeanvoice.com,

1. Bulgaria (2007), (see UPDATE below)
2. the Czech Republic (2004), (see UPDATE below)
3. Poland (2004) and
4. Slovenia (2004) (see UPDATE below)

have indicated that they would not be in a position to sign the agreement next week because they still had technical issues to resolve. They are expected to sign at a later date.

Italy has opted out of the enhanced co-operation for creating the Unitary Patent. However, from the same source we have information saying Italy will nevertheless be signing up to the court agreement but – at least for the moment – not participate in the Unitary Patent.

Concerning Poland we know that they prefer taking a wait-and-see approach on unitary patent for now.

Spain has opted out anyway and will not join the signing party.

European Interoperability Framework

While nowadays most of the initial filings with the European Patent Office (EPO) or with the Office for Harmonisation in the Internal Market (OHIM) are made via electronic means, a lot of other communication between the respective Office and the applicants or their representatives usually still is dealt with by paper-based means. For example, the EPO sends an awful amount of registered letters every day, and the OHIM mainly uses telefax for sending out Official communications and for receiving responses thereto.

In this context it should be noted that the new Unified Patent Court will be the first major European institution in the field of IP which adopts a policy solely allowing electronic communication, effectively banning all paper-based backdoors. Article 44 of the Agreement on a Unified Patent Court stipulates:

ARTICLE 44

Electronic procedures

The Court shall make best use of electronic procedures, such as the electronic filing of submissions of the parties and stating of evidence in electronic form, as well as video conferencing, in accordance with the Rules of Procedure.

In the 14th Preliminary set of provisions for the Rules of procedure of the Unified Patent Court this matter is picked up by Rule 4, reading as follows:

Rule 4 – Lodging of documents

Written pleadings and other documents shall be lodged at the Registry in electronic form. Parties shall make use of the offcial forms available on-line.

“Written pleadings and other documents shall be lodged at the Registry in electronic form” – no exceptions allowed. At first we note that the internal competence for dealing with filings appears to lie with the Registry of the Court. As a second point, there will be “offcial forms” for each and every potential filing which must be usted and, after being filled in, filed electronically.

Moreover, throughout the full text of the Draft Rules of Procedure there are 25 mentions of “electronic address” of the Court and/or parties involved.

Neither those above-mentioned “official forms” nor the “electronic addresses” are explained in any technical detail within the Draft of the Rules of Procedure.

Closely related to these on-line issues are telephone and video conferences as indicated in Rule 105. There is no Rule defining applicable technologies for such purposes.

When discussing this matter, it might be worth to explicitly mention that it makes sense to adopt a policy for electronic communication when creating a new Court system. In terms of costs and efficiency, it is high time to depart from traditional paper-based structures. And, as a second point, it surely would not be wise to give detailed technical definitions of particular technical means within a high-level legal text because of changes of technical means in the course of progress might otherwise cause frequent changes thereof.

However, someone needs to be in charge of defining technical details of the electronic IT communication interfaces to be supported and requited by the Court. Theoretically, there might be two points within the new Court dealing with this matter:

• The Administrative Committee defined in Article 12 of the Agreement: Nowhere within the Agreement the Administrative Committee is charged with defining technical details of the electronic communication infrastructure to be set up by the Court.
• The Registrar is to be appointed in accordance with Article 10 Para. 1 to manage the Registry. Furthermore, Article 10 Para (4) stipulates that the Registrar is not only to be appointed by the Court but the Court is also required to lay down the rules governing the Registra’s service.

Hence, I think it is safe to conclude that the model behind the present 14th Draft of the preliminary set of provisions for the Rules of procedure of the Unified Patent Court essentially says that the technical details of the IT infrastructure of the Court including the external communication interfaces are to be determined by the Registrar closely guided by the Presidium of the Court (see Article 24 Para. (1) of the Statute of the Unified Patent Court). Article 15 of the Statute definis the composition of the Presidium as follows:

Presidium

(1) The Presidium shall be composed of the President of the Court of Appeal, who shall act as chairperson, the President of the Court of First Instance, two judges of the Court of Appeal elected from among their number, three judges of the Court of First Instance who are full-time judges of the Court elected from among their number, and the Registrar as a non-voting member.

Therefore, is likely that the outlines of the technical details of the IT infrastructure of the Court including the requirements of the external communication interfaces will be set by a body essentially consisting of judges of the Court. It should be noted that according to Article 14 of the Agreement, the Advisory Committee will have no influence so far.

In general, it appears to be a natural tendency of large organisations run by a state or by a group of states to try to resolve their own problems when defining technical particulars of their IT infrastructure including external communication interfaces. Insiders of such organisations my not have in view needs and/or constraints of those external people who need to communicate with the organisation on the basis of certain standards. Of course, these problems are not new. The general technical term describing this requirement is interoperability:

Interoperability is the ability of diverse systems and organizations to work together (inter-operate). The term is often used in a technical systems engineering sense, or alternatively in a broad sense, taking into account social, political, and organizational factors that impact system to system performance.

While interoperability was initially defined for IT systems or services and only allows for information to be exchanged (see definition below), a more generic definition could be this one:

“Interoperability is a property of a product or system, whose interfaces are completely understood, to work with other products or systems, present or future, without any restricted access or implementation.”

On the level of EU such problems have been addressed by the European Interoperability Framework for Pan-European eGovernment Services V. 1.0 dated 2004:

The objectives of the European Interoperability Framework (EIF) are:

• To support the European Union’s strategy of providing user-centred eServices by facilitating the interoperability of services and systems between public administrations, as well as between administrations and the public (citizens and enterprises), at a pan-European level.
• To supplement national interoperability frameworks in areas that cannot be adequately addressed by a purely national approach.
• To help achieve interoperability both within and across different policy areas, notably in the context of the IDABC programme and any other relevant Community programmes and initiatives.

One of the major recommendations promoted by the EIF reads as follows:

RECOMMENDATION 2:

The following principles, of a general nature, should be considered for any eGovernment services to be set up at a pan-European level:

• Accessibility
• Multilingualism
• Security
• Privacy
• Subsidiarity
• Use of Open Standards
• Assess the benefits of Open Source Software
• Use of Multilateral Solutions

In 2006, the European Commission has started the revision of the European Interoperability Framework (EIF) and the Architecture Guidelines (AG); for details see here. Results can be found there.

I don’t think that it would be wise to let the Presidium of the Unified Patent Court decide alone and based only on their own findings how to define the external IT interfaces for plaintiffs, defendants and their representatives. I am afraid they are neither skilled with regard to problems of interoperability in various IT architectures nor will they see any incentives in forming IT structures that are not only functional for fostering the internal efficiency of the Court but also fair with regard to the burden imposed on the parties and their representatives by obligatory requiring their utilisation.

Therefore, I think it might be useful to add another Rule to the Rules of Procedure indicating some abstract but binding guidelines which must be taken into consideration by the Presidium when actually setting rules for on-line business with the Court. Details remain to be considered but I think that Recommendation 2 from EIF V. 1.0 as quoted above might be a good starting point. Providing such guidelines within the legal framework might be of help for the Presidium when taking in expert advice from outside.

In particular, standards are key to interoperability as expressis verbis stated in the Draft Document for EIF 2.0. In the EU strategy for Growth and Jobs, strong and dynamic standardisation has been identified as one of the key instruments to foster innovation. Standardisation has a dimension of public interest, in particular whenever issues of safety, health, environment and performance are at stake, we can read there. The conclusion drawn there surely is applicable also with regard to the IT system of the Unified Patent Court:

Public administrations and European Institutions such as the European Commission should actively support efforts at eliminating the use of proprietary standards and solutions within public administrations by actively supporting and participating in standardization efforts, particularly by formulating and communicating needs and requirements, according to the new approach.

In this context please refer also to Neelie Kroes’ Address at Open Forum Europe 2010 Summit: ‘Openness at the heart of the EU Digital Agenda’ Brussels, 10th June 2010. Ms Kroes is European Commission Vice-President for the Digital Agenda.

Furthermore, an extension of the competences of the Advisory Council might be considered, tasking this body also with proposing adequate policies for ensuring interoperability between the IT of the Court, on the one hand, and the IT of its users, on the other hand.