UPC Archives - UPC Blog by amar goussu staub

5 May 20196 September 2019

How to get Unitary Patent protection?

The Steps to get a unitary patent protection?

This is a two steps procedure:

1/ First apply for a EP patent with the EPO
The filing procedure , examination and grant formalities are similar in any way to those of a regular EP patent.
Any person may file a patent application, in any language, provided that a translation into one of the three official languages of the EPO (french, german or english) is filed within two months of the date of filing. The language of the translation will be the language of the proceedings. The patent is published in the language of the proceedings and the claims are translated into the two other official languages.

2/Then, upon grant of the EP patent: the request for the unitary effect

Unitary patent protection will only be available for EP patent granted on or after the date of entry into force of the UPC Agreement (A. 18(6) of Reg. (EU) N° 1257/2012, and having the same set of claims in respect of all the participating Member States.

The patent proprietor shall apply with the EPO for the unitary protection within one month from the publication of the mention of grant of the EP patent in the European Patent Bulletin . The request shall be filed in the language of proceedings of the EP patent (A.9(g) of Reg. (EU) 1257/2012).
The unitary effect will be indicated in the Register for unitary patent protection, administered by the EPO.

The EPO is currently developing machine translations of patent specifications into all of the official languages of the Union. Therefore, no further translations of the EP patent will be required from the patent proprietor after the end of the transitional period of 6 years (up to 12 years), except in the event of a dispute.
During the transitional period, if the patent is in english, the specification must be translated into any other official language of the Union; if however the patent is in french or german, it shall be translated into english.

The EPO will also administer a compensation scheme for the reimbursement of translation costs for some applicants filing the EP application in one of the official languages of the Union that is not an official language of the EPO. Applicants eligible for the compensation scheme include SMEs, non-profit organisations, universities, individual having their residence or principal place of business within a Member State.

Renewals in respect of the years following the year in which the mention of the grant is published in the European Bulletin will have to be paid with the EPO. There will be a 6 months period for late payment of the renewal and corresponding additional fees.
Can software be patented under the new rules? Will the rules governing patent ability for software change?

No. The unitary patent package will not change the rules on granting a patent, but only the geographic extent of the legal protection that a patent affords, once it has been granted.

(G) Fees

The fees for the Unitary Patent are yet to be decided. The criteria for setting the fees can be found at Article 12 of the Unitary Patent regulation. The process will need to take into account administration costs, the size of the market and the level of fees paid for current European bundle patents.

According to the European Parliament, today, a European patent issued by EPO providing protection in the 27 EU Member States can cost up to €36,000, including up to €23,000 in translation fees alone. According to the European Commission, the new unitary patent will cost a minimum of €4,725, when the new rules are fully implemented, up to a maximum of €6,425. The costs for translation will range from €680 to €2,380.

29 January 20196 September 2019

How is it going to work? A new update on the UPC Case Management System:

Brexit and the German constitutional challenge

On Monday 25/01/2016 was organised in Paris a presentation on the UPC Case Management System with the UPC IT Team. The UPC Case Management System is the platform that will allow the submission of actions and their documents before the UPC, the communication with Judges and Clerks, and the free access by the public to all cases and decisions.

This system is therefore central to the UPC and can already be accessed here. Users are encouraged to leave feedbacks to help shape the system, even if as indicated by the IT Team in its weekly newsletter, no further changes will take place until after March 2016, and all feedbacks “will be logged and put in the backlog for future development which will take place in April 2016“.

Below are the main points developed in this presentation which should clarify the major elements of the UPC Case Management System.

IT and Security:

The Case Management System (CMS) will be available from any device. It will require users to register on the UPC CMS. Registered users will need their email address, their password, and a code sent by text to the user’s phone to log in.

Users will have to register twice: first for the trial version of the UPC CMS (you can do so here) and then to the real version of the UPC Case Management System. (See Registration for more info)

The EU STORK system may be used, although not initially. The aim of the STORK project is “to establish a European eID that will allow citizens to establish new e-relations across borders just be presenting their national eID”. This system would allow users to get connected to the UPC CMS with their national login.

Data is stored in Munich, Germany, by a company which is a Deutch Telecomm subsidiary. Two penetration attempts have been simulated and failed. Twenty attacks have already been recorded.

The IT management will be handed over to the permanent IT Team in Luxembourg in March 2016 .

There will be the possibility to connect law firms’ IT system with the UPC CMS -to obtain alerts for example. There will also be the possibility to synchronise the Court calendar with firms’ calendars.

The Court’s diary and the case history will be publicly accessible. Once on the UPC CMS, the cases will be freely available to be viewed by the public (see confidentiality section for more info).

Arbitration Centre:

The Arbitration Centre will use the same CMS. The Arbitration Centre CMS will however be independent from the UPC. It won’t therefore be possible for the UPC to access the Arbitration Centre CMS.

Registration:

Internal users: Clerks, Judges, Administrators will be registered by the system administration.

External actors: The parties (claimant and defendant) and third parties (witness and experts) will need to apply for registration before being able to access the system.

At the moment the creation of groups is not possible but it will be allowed soon. All users will need to register individually, then one user will become an Administrator and will be able to create a group of representatives. It won’t be possible to have more than one administrator.

Processes:

The IT Team built the UPC CMS around the Rules of Procedure. Therefore, if the Rules do not provide for a specific provision, the IT Team cannot create it in the IT system. By the end of February/Beginning of March the rules of procedure will be finalised and the IT Team will be able to finalise the UPC CMS.

Cases are included within a process of a pre-determined actions: Infringement, Declaration of non-Infringement, Revocation, Compensation for licences, Action against decision of the EPO.

Each action is organised around a system of logically interconnected sub-processes, for example: submit a statement of claim, raise a preliminary objection.

All actions, undertaken at any stage, of the process are recorded and will be the object of an email to the user, confirming that that specific action has been carried out by the user.

Timers are also available for each task. They will ensure that every action is accomplished within the procedural time limit.

Documents:

Every action is built around documents: forms (which will be pre-filed to save time), pleadings, exhibits, orders, applications.

Documents will be stored on the CMS. It is not possible at the moment to create a draft document and keep working on the system but it is possible to create a draft case, which will only become public and available to the court once it is submitted. It will therefore be possible for an external user to update documents until submission.

If the document is submitted by an external user, it can be rejected or validated by a Court member. If rejected, the external user can submit a request of amendment.

In case of a group of representatives, all members will be able to submit documents.

Confidentiality:

Request for confidentiality can be obtained for confidential documents. It is however not automatic and can be challenged. The documents included in the request for confidentiality will be notified to the judge for an evaluation of the documents’ confidential nature.

If the documents are not deemed confidential they will be available to the public. The submitting party can however withdraw these documents. If they are deemed confidential, the party who submitted them must provide a redacted version, which will be available to the public.

It will be possible to create a confidentiality club, which may include the defendants and/or any chosen third party.

Communication:

CMS will send electronic receipts to confirm that the documents have been received and that an action has been performed for the case. The UPC however still has to provide the details of these emails.

The Participants to the Paris’ workshop asked the IT team to have the possibility to attach to the case the communication with the Judge. The IT Team responded favourably to this request.

Audio (Interim Conference) and Video (Final Hearing) record of court sessions will be available on the CMS.

Opt-out:

A patent can be opted-out by filling a form on the CMS. It requires the patent number. Once the patent number is entered, the information will be extracted from the EPO registers, and will be used for the automatic filling-in of the opt-out form.

The EPO’s information might not be up to date, so it will be important to check the pre-filled form and amend any incorrect information. In fact, if some details are missing or are incorrect the opt-out is ineffective until corrected (Rule 5.6).

Once the information is amended on the UPC CMS, it will become public. The EPO will therefore have an opportunity to amend its register. At the moment, there is however no partnership between the EPO and the UPC. It is therefore uncertain whether the EPO’s registers will be updated.

There will be a different opt-out form for the SPCs.

It is presently only possible to opt-out patents one by one. However the IT Team is looking at an option, which would enable patent owners to opt-out baskets of patents (not more than 30).

Claimants will be able to file a claim even if the patent has been opted-out, to prevent a legitimate action to be stopped by a fraudulent opt-out. In fact when submitting a claim for a patent, which is identified as opted-out by the CMS, its opt-out will be flagged and the CMS will identify the cases in which this patent has appeared. If there is a disagreement as to whether the patent has actually been opted-out (for example the claimant could argue that it has not been opted-out by the patent proprietor but by someone else) it will be to the court to decide whether the patent was opted-out.

The method of payment is not yet scheduled as the fees are not determined yet. If there is a fee it will be payable online.

The Opt-out will be ready by March. No exact date however for the public to start opting-out.

Ownership:

The patent proprietor is the person shown in the relevant register. Rule 8.5 however makes clear that this presumption can be rebutted by the actual proprietor by showing that there are entitled to be recorded as proprietor in each country where the patent has been validated, even if in fact not registered.

Therefore, if the claimant is not the proprietor, they will be required to submit a declaration of proprietorship following Rule 5.3(e), to prove that they can legitimately pursue the case or the opt-out. This document won’t however be checked by UPC officials. Thus, if a problem arises the validity of the opt-out will have to be challenged before the court.

Fees:

The fees will be decided in February by the Preparatory Committee. The IT Team will then design a user-friendly fee platform to allow users to pay online. No other form of payment will be possible. The assessment of the fee should be based on “fair royalties” as the Preparatory Committee intends to have simple fee guidelines.

Languages:

Where a Member State nominates a language of proceedings both under Article 49(1) and Article 49(2) UPCA, the claimant may choose the language of proceedings subject to:

-Rule 14.2(b)-the “Belgian exemption” which applies when there is only one local exception;

-Rule 14.2(c)-the judge rapporteur may in the interests of the panel of judges order that the decision may be given in the Article 49(1) language together with a certified translation.

Concerning the CMS, the IT Team is now waiting for it to be finalised to start the translations that will enable claimants to have access to the CMS in English, French or German.

26 March 201827 March 2018

What should you know about the Unitary Patent?

The Unitary Patent should soon add a new level of protection for patent owners in Europe. This post therefore presents the essential characteristics of the Unitary Patent, and how it differs from the current patenting system.

What is the current patenting system in Europe?

In Europe, it is currently possible to apply for a patent through the national, international, and European routes.

Under the national route, applicants can apply for a patent in one country at a time. The applicant must file the application at the IP offices in the countries where she seeks protection. The national route leads to national rights and confers protection at national level.

Under the international route, the Patent Cooperation Treaty (PCT) provides a unified procedure for 152 different contracting states. A PCT application allows patent holders to simultaneously seek patent protection in a large number of countries by filing a single “international” patent application. It is not necessary to file several separate national or regional patent applications. The granting of patents remains however under the control of the national or regional patent offices.

Under the European route, applicants are granted European patents for some or all of the contracting states to the European Patent Convention (EPC) and to the current extension states (Bosnia and Herzegovina, Montenegro). A European patent is a bundle of national patents. It has the effect of and is subjected to the same conditions as a national patent granted by that state. This is true for each of the contracting states for which it is granted.

What is a Unitary Patent?

A European patent with unitary effect or Unitary Patent is a new type of European patent, to which unitary effect is given. The Unitary Patent is not a new intellectual property title but a new legal characteristic given to an already existing title: the European patent.

The Unitary Patent will be granted by the EPO under the rules and procedures of the EPC. It will co-exist with the current patent system. Patent proprietors will be able to choose between European patents, national patents and Unitary Patents.

It will not be possible to obtain a European patent and a Unitary patent for the same invention.

Which legal instruments created the Unitary Patent?

In March 2011, the Council of the European Union issued a decision authorising enhanced cooperation for the creation of a unitary patent protection.

Enhanced co-operation is a mechanism set out in the Lisbon Treaty. It allows 9 or more EU member states to establish advanced integration or cooperation in any area within the EU structures, without the other member states being involved.

The Unitary Patent package consists of:

Regulation (EU) N°1257/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of the unitary patent protection.

Regulation (EU) N°1260/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.

The Agreement on a Unified Patent Court (UPC Agreement), an agreement between EU countries to set up a single and specialized patent jurisdiction. This Agreement must still be ratified by most Member States. The UPC Agreement will enter into force on the first day of the 4th month after the deposit of the 13th instrument of ratification, including the ratification of Germany, France and the United Kingdom. These 3 countries were indeed the 3 Contracting Member States in which the highest number of European patents had effect in 2012. Currently 15 Member States including France have ratified the UPC Agreement.

What are the goals of the Unitary Patent?

The Unitary Patent aims at:

Reducing the current cost of patenting. Patenting an invention in Europe can be costly, as once granted, a European patent can only be enforced at national level. This may also entail translating it into the official language of the country concerned and paying validation and annual renewal fees in multiple states. The Unitary Patent on the contrary will offer simpler and cheaper translation requirements. It will also be subject to a single set of renewal fees. This will allow for a reduced patenting cost.

Improving legal certainty and reducing litigation costs. Patents on inventions with a high market value are frequently the subject of litigation. Due to the lack of a unified litigation system, this leads to parallel lawsuits in different countries and divergent outcomes. The Unitary Patent will be under the exclusive competence of the Unified Patent Court. It will thus depend only on a single set of rules. This should guarantee a unified application of the law and prevent any parallel and discordant law suit. Finally, the decisions of the UPC, will have authority in all participating Member States.

When will it be possible to apply for a Unitary Patent?

Patent holder will be able to request unitary effect for any European patent granted on or after the date of entry into force of the UPC Agreement. It will however not be possible to request unitary effect for patents granted before that date.

In which countries will the Unitary Patent be available?

The Unitary Patent will be available in the participating Member States that have signed and ratified the UPC Agreement.

26 countries (all EU Member States besides Spain and Croatia) have adopted the European Regulations. 25 countries (all EU member states except Spain, Croatia and Poland) signed the UPC Agreement. However, only 15 Member States have so far ratified the UPC Agreement.

The Unitary Patent will be available for the territories of the Member States that have ratified the UPC Agreement. Hence although the Unitary Patent may one day be available for 26 countries, it will start off with less countries. The Unitary Patent will however cover the territory of at least 17 countries (ie the 15 member states that have already ratified the UPC Agreement + UK and Germany). The extension of the Unitary Patent’s territorial coverage will thus be progressive as the rest of the Member States will ratify the agreement over time.

Renewal fees:

To maintain a Unitary Patent, the patent holder will have to pay an annual renewal fee directly to the EPO.

The Select Committee endorsed in December 2015 the True Top 4 proposal for the renewal fees applicable to the Unitary Patent. The True Top 4 corresponds to the total sum of the renewal fees currently paid for the four most frequently validated countries. These are: Germany, France, UK and the Netherlands. The True Top 4 gives also special consideration to the situation of the SMEs.

2nd year:	35 EUR	12th year:	1, 775 EUR
3rd year:	105 EUR	13th year:	2, 105 EUR
4th year:	145 EUR	14th year:	2, 455 EUR
5th year:	315 EUR	15th year:	2, 830 EUR
6th year:	475 EUR	16th year:	3, 240 EUR
7th year:	630 EUR	17th year:	3, 640 EUR
8th year:	815 EUR	18th year:	4, 055 EUR
9th year:	990 EUR	19th year:	4, 455 EUR
10th year:	1, 175 EUR	20th year:	4, 855 EUR
11th year:	1, 560 EUR

For more informations on the Unitary Patent check the Unitary Patent section of the blog.

16 November 201715 November 2017

Starting proceedings before the UPC

What should the plaintiff lodge to start proceedings?

Depending on the type of action to be started, the plaintiff shall lodge either:

a Statement of claim;
a Statement for revocation;
a Statement for a declaration of non-infringement;
an Application for appropriate compensation under Article 8.1 of Regulation 1257/2012;
an Application to annul or alter a decision of the European Patent Office;
an Application for obtaining provisional and protective measures and injunctions.

Where should the plaintiff lodge her statement/application?

For First Instance proceedings:

A plaintiff shall lodge her Statement or Application at a sub-registry of the UPC’s Registry. Sub-registries will be set up in all local or regional divisions as well as in central divisions.

The plaintiff may under Article 33 of the UPC Agreement, choose between several divisions . The UPC Agreement in fact provides for the plaintiff to lodge her application either before the local division where the actual or threatened infringement has occurred or the local division where the defendant has its place of residence or place of business. The plaintiff must in any way lodge its application in accordance with the competence of the divisions.

For Appeal proceedings:

Appellants must lodge an Application for leave to appeal against an order of the Court of First Instance .

Appellants must lodge a Statement of appeal to appeal against a decision of the UPC’s Court of First Instance

Appellants must lodge both at the UPC’s Registry located in Luxembourg.

How should the plaintiff lodge the statement/application?

An electronic filing system will be set up to enable plaintiffs to lodge the Statement or Application electronically at the UPC’s Registry.

This electronic filing will be available for First Instance and Appeal level.

16 November 20176 September 2019

What will the UPC be competent for?

What will be the competence of the UPC?

As a general rule: The UPC will have exclusive competence in respect of civil litigation on matters relating to European patents and Unitary Patents. The UPC will consequently also have exclusive competence on Supplementary Protection Certificates issued for a product covered by a European patent and a Unitary Patent.

More specifically: The Court will be exclusively competent for actual or threatened infringements and related defences, and actions for declaration of non-infringement. The UPC will also be competent for actions for provisional and protective measures, injunctions, actions for revocation and counterclaims for revocation.

However, during at least 7 years after the entry into force of the UPC Agreement, national courts will share jurisdiction with the UPC over actions for infringement and revocation of the national part of a European patent. These 7 years correspond to the transitional period.

What about the Court of Justice of the European Union?

The UPC will have the same obligation as any national court to request preliminary rulings from the Court of Justice of the European Union.

In fact, the UPC is a court common to EU Contracting Member States and as such, it must follow, apply and ensure the uniform interpretation of European Union law.

However, national courts will remain competent for actions that do not come within the exclusive competence of the UPC. The UPC will thus be incompetent with regard to national patents or supplementary protection certificates granted for a national patent.

What will be its relationship with the EPO?

The UPC will have exclusive competence to annul or alter the decisions of the EPO (Article 32 UPC Agreement) if the EPO misuses its power or infringes:

Regulation (EU) N° 1257/2012;
Regulation (EU) N°1260/2012;
Any of the implementing rule of the EPO “for carrying out the administrative tasks referred to in article 9(1) of Regulation (EU) N°1257/2012;
An essential procedural requirement.

Nonetheless, oppositions at the EPO will still be possible. The parties however must first inform the UPC of any pending revocation, limitation or opposition proceedings before the EPO. The Court may then:

stay its proceedings when a rapid decision may be expected from the EPO.
request that opposition proceedings before the European Patent Office be accelerated in accordance with the proceedings of the European Patent Office, (Rule 298 of the Rules of Procedure of the UPC)

16 November 201722 March 2018

The structure of the Unified Patent Court in 3 points

(1) How will the UPC be structured?

The UPC will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of Justice of the European Union will hear questions on referral and preliminary rulings on European Union law.

The Court of First Instance will be composed of a central division and several local and regional divisions across the Contracting Member States.

The Court of Appeal will have only one division and, together with the Registry, will be located in Luxembourg.

(2) Where will the Central Division be?

The central division will be divided between three seats: Paris, London and Munich.

London	Paris	Munich
Human necessities	President's Office	Mechanical engineering
Chemistry	Performing operations and Transporting	Lighting
Metallurgy	Textiles and Paper	Heating
	Fixed constructions	Weapons
	Physics	Blasting
	Electricity

(3) Where will the Local and Regional Divisions be?

The local divisions will be located in Paris, Munich, Mannheim, Dusseldorf, Hamburg, Milan.

One regional division is announced in Stockholm and will bring together the Baltic states with Sweden.

This list is not exhaustive and more local and regional divisions may be confirmed in the coming months.

Summary Diagram:

For the exact locations see our post on the subject.

16 November 20176 September 2019

Four key points to understand the Unified Patent Court

(1) Which courts currently have jurisdiction over European patents?

Currently, national courts of the contracting states of the European Patent Convention (EPC) are competent to decide on the infringement and validity of the national part of European patents.

This gives rise to a number of difficulties when a patent proprietor wishes to enforce a European patent, or when a third-party seeks the revocation of a European patent, in several countries.

Patent proprietors indeed risk facing diverging decisions between the different national courts of the EPC contracting states. Patent proprietors also face high costs and legal uncertainty over the fate of their patents.

At present, forum shopping is inevitable. Parties in fact seek to take advantage of differences in the national courts’ interpretation of harmonised European patent law, the level of damages awarded, the national procedural laws, and litigation pace.

(2) What is the Unified Patent Court?

The Unified Patent Court Agreement (UPC Agreement) will create a specialised patent court, the Unified Patent Court (UPC).

The Unified Patent Court will have exclusive competence over European patents and European patents with unitary effect. The territorial jurisdiction of the UPC will extend to the 25 participating Member States (every European Union Member States besides Spain, Croatia and Poland).

This means that the rulings of the court will be simultaneously valid in all participating Member States.

The UPC will thus create a uniform and foreseeable patent environment within the European Union.

(3) Which legal instruments created the UPC?

Two Europeans regulations created the UPC:

Regulation (EU) N°1257/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of the unitary patent protection.
Regulation (EU) N°1260/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.

These two regulations will apply from the entry into force of the UPC Agreement.

(4) How much will users of the court need to pay for each action before the UPC?

To learn about the different court fees see our detailed review.

16 November 201722 March 2018

The key dates of the UPC’s timetable: from the entry into force of the UPC Agreement to transitional period

The entry into force of the UPC package follows a complex timetable. The UPC goes in fact through 3 phases and periods before its start of operations.

When will UPC Agreement enter into force?

The UPC Agreement will enter into force on the 1st day of the 4th month after the deposit of the 13th instrument of ratification. The instruments of ratification must include Germany, France and the United Kingdom.

Germany, France and the United Kingdom’s ratification are indeed a prerequisite to the UPC Agreement entry onto force. This is because they were the 3 Contracting Member States in which the highest number of European patents had effect in 2012.

At the end of October 2017, 14 countries had ratified the UPC Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Lithuania, Luxembourg, Malta, Netherlands, Portugal, and Sweden. Germany and the UK are currently in the process of ratifying the UPC Agreement.

The Preparatory Committee is thus working under the assumption that the Court will become operational in the first quarter of 2018.

What are the Provisional Application Phase and the Sunrise Period?

The Provisional Application Phase will start when 13 Member States that have already signed the UPC Agreement and whose Governments have received Parliamentary approval to ratify the UPC Agreement, approve the Protocol to the Agreement on a Unified Patent Court.

It will allow for some parts of the UPC Agreement to be applied early. The UPC Committees will be able to take final decisions on the practical set up of the Court. They will -for example- be able to finalise the recruitment of judges and the testing of the IT.

The Provisional Application Phase is scheduled to last for 6 months. The last 3 months, also known as the Sunrise Period, will specifically allow European patent proprietors to start opting out. The opt-out is the procedure by which proprietors or applicants for a European patent can withdraw their patents from the exclusive competence of the Unified Patent Court (See the Opt-out: Essential Guide)

Currently, the Preparatory Committee chairman considers that the Provisional Application Phase should start in autumn 2017. The Sunrise Period could then follow at the beginning of 2018.

What is the transitional period?

The transitional period will last 7 years starting after the entry into force of the UPC Agreement. The UPC Administrative Committee may renew it for a further 7 year. The transitional period is likely to start in the second quarter of 2018. It will then last up to the second quarter of 2025.

During this period the UPC will share jurisdiction with national courts over actions for infringement and revocation of a European patent. Hence, any holder of or applicant for a European patent will be able to initiate actions before national courts. This will be regardless of whether the European patent or application concerned will have been the subject of an opt-out.

Patent holders will be able to request unitary effect for any European patent granted on or after the date of entry into force of the UPC Agreement. The UPC will have exclusive jurisdiction over Unitary Patents.

If the transitional period is not renewed, the UPC will have perpetual exclusive jurisdiction over Unitary Patents and European patents. Opted out European patents will not come back under the UPC exclusive competence once the transitional period is over.

Summary Diagram:

11 July 20173 November 2017

Update on the Opt-out Process and the Case Management System: a Letter from the UPC Chairman

The UPC Chairman answers the questions of the British IP Federation about the opt-out proceedings.

On June 13^th, the British IP Federation, which represents the view of UK industry in IP policy and practice, wrote an open letter to the Chairman of the Preparatory Committee of the Unified Patent Court (UPC) Mr Alexander Ramsay asking him to clarify the opt-out process during the sunrise period (3 months before the entry into force of the UPC Agreement).

Six days ago, the IP Federation published on its website the reply from the chairman. In his response, Mr Ramsay addressed the following points:

The Chairman clarified the meaning of rule 12 of the Draft Rules on the European Patent Litigation Certificate. This rule does not prevent a European Patent Attorney (EPA) with an existing alternative qualification to register during the sunrise period as a UPC Representative.

The IP Federation had concerns that the massive influx of registrations as UPC representatives at the start of the sunrise period could create delay. But, the chairman stated that arrangements had been made to manage the expected large number of applications.

All users, including staff members, will have to register on the Case Management System (CMS) if they want to make applications to opt out. There will be a two-stage authentication procedure to register, first as a user, then as a UPC representative on the CMS. The details of this procedure will be published in the near future on the UPC Website.

The formalities staff will be able to prepare the opt-out applications for EPAs or representatives to file. However, the formalities staff will have to use their own user ID if they want to register the opt-out on behalf of the EPA or representative. Any user that lodges the application will be responsible for its content and must provide her user identity. Besides, a mandate will be required for any user that is not a qualifying EPA or a UPC representative.

The proprietor of a patent will not need a mandate to opt it out. If the proprietor is a company, any member of the staff who is not a UPC representative will need to file a mandate. This is why the Preparatory Committee is considering the creation of a general mandate to authorize multiple opt-out applications by a particular user over a period.

Application Programming Interfaces (APIs) are provided by the UPC IT team in the developer section of the UPC website to enable companies to integrate the CMS to their IT systems. Also, a user-friendly guidance through the APIs and a list of third-party companies specialized in services for integration with the CMS will be published on the UPC website as soon as possible.

The Chairman did not specify any date for the start of the sunrise period.

Changes coming to the Case Management System.

On a side note, on July 5^th the UPC IT team released an update to the CMS. The goal is to fine-tune different processes on the site like the opt-out application process or the procedure of patent selection. A new API was also made public on the UPC website.

A few days later, the UPC IT Working Group Coordinator Dario Pizzolante announced in a statement that a new version of the CMS specifically designed for the opt-out procedure during the sunrise period will be released in August. He also added that in the future the changes made to the CMS will not be released continuously but instead in larger updates. The IT team is currently working on the adaptation of the CMS to the rules of procedure and on the authentication mechanism. Besides, the team has been receiving feedbacks from multiple workshops since the creation of the temporary website.

1 February 201721 March 2017

The UPC to become operational in December 2017: The new timetable for the UPC start of operation

The Preparatory Committee published a new timetable for the UPC’s start of operation, indicating that:

The Provisional Application Phase would start at the end of Spring 2017 (presumably in May). It will allow for judicial interviews to take place and appointments to be confirmed.

The possibility to opt-out European patents will start in early September.

The UPCA would enter into force in December 2017.

The UPC would thus become operational in December 2017 too.

The Preparatory Committee however warns that this timetable is “conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable. The most important factors in meeting these dates is the necessary ratifications of the UPCA and accession to the Protocol on Provisional Application.”

It is expected that the next meeting of the Committee which will take place in March gives more details and updates as to whether the UPC will effectively become operational in 2017.

More on the Provisional Application Phase:

On 1st October 2015 a protocol to the UPCA was signed by some member states to allow “final decisions on the practical set up of the Court” to enter into application such as the “recruitment of judges and testing of IT systems“, or the very much talked-about early registration of opt-out demands. The protocol aims at permitting a smoother set up of the court.

It will enter into force after 13 states, that have already signed and ratified the UPCA, approve the protocol either by signing or approving it. So far 9 Member States have signed it (Germany, Denmark, France, UK, Hungary, Luxembourg, Romenia, Slovenia, Sweden) . The UK has however entered a reservation, stating that it “shall not provisionally apply Article 4 of the Agreement on a Unified Patent Court.”

As a reminder, Article 4 provides that ” (1) The Court shall have legal personality in each Contracting Member State and shall enjoy the most extensive legal capacity accorded to legal persons under the national law of that State. (2) The Court shall be represented by the President of the Court of Appeal who shall be elected in accordance with the Statute.”

For more information see our posts on the Protocol on provisional application of the Unified Patent Court Agreement here and its update here.