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Kim Finnilä represents Finland in preparations for the upcoming European Unitary Patent System

Dec 2, 2014

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    Mr Kim Finnilä of the Berggren Group was invited to a hearing in Trier on 26 November 2014 where he aligned decisions concerning the upcoming European Unitary Patent. In the hearing, several experts commented on the most recent and considerably changed draft for the Rules of Procedure of the European Unified Patent Court (UPC) drawn up by the Preparatory Committee. Mr Finnilä presented his views on two main topics, the so-called opt-out scheme and the language provisions, and his two main interventions did touch a chord. Thanks to him, the Finnish licensed lawyers also retained their representation rights.

    Senior IP Advisor, European Patent Attorney Kim Finnilä represented Finland and the Association of Finnish Patent Attorneys in a hearing which debated the most recent draft of the Preparatory Committee for the Rules of Procedure of the UPC. A number of European patent experts, who have participated in the consultations of the Preparatory Committee during the process, were invited to the hearing held in Trier, Germany on 26 November 2014. Moreover, there were about 70 representatives from European organizations as well as a few American stakeholders.

    The aim of the tightly scheduled hearing was to align and forward further decisions concerning the execution and principles of the European unitary patent system which is expected to be implemented around 2016/17.

    Finnilä given the floor three times

    "The hearing had four main topics: the so-called opt-out scheme which enables withdrawal of classical European patents from the jurisdiction of the UPC; the language provisions of oral proceedings; injunctions; and as a fourth topic, the leave-to-appeal procedure. I was given the opportunity to take the floor on two of these topics. From a Finnish viewpoint, I felt most development was needed on the opt-out scheme and the language provisions which have become rather complicated."

    "I moreover raised an additional question about the representation rights before the UPC. The proposal of the Preparatory Committee has advanced regarding confidentiality and privilege rules. However, there is still a lot to improve with regard to the representation rights and the right of audience of patent attorneys. I took the side of the Finnish licensed lawyers as well," Mr Finnilä says.

    Goal: principles functional for Finns

    In the Preparatory Committee’s hearing the expert comments were scheduled tightly and interventions were restricted to three minutes.

    Mr Finnilä says he proposed more clarity and functionality for the opt-out scheme.

    "I discussed the topic also with Wärtsilä’s General Manager Timo Vuorimies who represented The Finnish Chambers of Commerce in the hearing. The applicants and proprietors of European patents have to carefully consider whether to keep their patents under national or UPC jurisdiction. Furthermore, companies have to be ascertained that an opt-out application takes effect immediately when the application is filed with the Reigstrar or the envisaged temporary register to be maintained by the European Patent Office until the unitary patent system comes into force."

    Mr Finnilä commented on the language provisions by saying that they should be rationalized and defined more clearly from the viewpoint of the claimant.

    "In their proposed form the language provisions are ambiguous and not clear about the language of proceedings."

    Finnilä managed to retain the right to represent for the Finnish licensed lawyers

    During the afternoon’s Q&A session, Mr Finnilä sought to argue for the sufficient and due rights of the European Patent Attorneys. Moreover, he successfully defended retaining the representation rights of the Finnish so-called licensed lawyers authorized to represent before court as one of the special provisions.

    "Basically only the attorneys-at-law of the Member States have been accorded the right of representation before the UPC. However, a special provision has been added to the Rules of Procedure which would allow representation rights e.g. also for the Finnish licensed lawyers in the future. The amendment was strongly criticized and it was proposed to be removed on the grounds that it would concern only a small group of lawyers. However, I got enough attention for my intervention and was able to argue for the importance of this special provision. It will remain in the Rules of Procedure," Mr Finnilä rejoices.

    Mr Finnilä says that all in all the pace of progress in the preparations for the European unitary patent system has been good. The system will come into force in just a year or two.

    As a part of the preparations, a so-called mock trial will be held in Paris in the spring of 2015. Their purpose is to illustrate the court proceedings according to the new system. Mr Finnilä has been invited to be the technical judge of this mock trial.

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