The Registrar of the Unified Patent Court has provided information on most commonly identified issues regarding the sunrise functionalities of the Court’s CMS.
According to the Registrar, former chairman of the UPC’s preparatory committee Alexander Ramsay, three weeks into the sunrise period approximately 1500 applications to register as a representative before the Court have been received and approximately 1800 opt-out applications.
In a report on the UPC’s website, he writes there have been some technical difficulties and the service desk receives a large number of inquiries. ‘Due to the current high workload it is difficult to respond to all individual questions as quickly as we would have liked.’
A document has therefore been made available, including information about the most commonly addressed issues, plus information from the Registry team on a couple of topics. The content of the document has been reproduced below.
Applications to become a Representative before the UPC
Delays in the approvals of early applications We have experienced a technical problem with the CMS that has had the effect that the staff of the Registry was not able to access some of the early applications in order to approve them. A technical solution has been developed and is effective as from March 21. The Registry is now proceeding as quickly as possible to examine all pending applications.
Identification of applicants
The UPC Case Management System is based on a strong authentication system where a physical device (card or USB key) is necessary to identify the individual accessing the system. This means that a representative needs to use an individual strong authentication device when accessing the system. On some instances, individuals applying to become representatives before the UPC have accessed the CMS with the device of another person and not via their own individual device. Such applications have not been approved since they are deemed to not fulfil the identification requirement. The Registry will contact the concerned applicants individually in the coming days and inform them accordingly. They will be kindly asked to apply again using their individual strong authentication device.
E-mail addresses used in applications
When acquiring a strong authentication device it is necessary to provide an email address, which thereafter will be linked to the device. When filing an application to be registered as a representative it is again necessary to provide an email address. This latter email will be recorded in the CMS. It is possible to provide a different email address in your application as representative than the one linked to the strong authentication device. When communicating with the representative, the CMS will use the email address provided into the CMS.
Accidently choosing the wrong entitlement
Some applicants have chosen the option “Article 48(2), Patent Attorney with EPLC – EPLC Decision Rule 1” instead of “Article 48(2), Patent Attorney with EPLC – EPLC Decision Rule 12”. There is not yet any formally approved EPLC courses, which means that an entitlement under EPLC Rule 1 is not possible. Against this background and under the condition that the applicant fulfill the criteria under EPLC Rule 12, such an application will be approved under the assumption that there has been an obvious mistake when checking the box. The Registry will correct it and register the application under the correct entitlement. We however ask for your understanding that this might take some time due to the fact that we need to configure a technical amendment before we can make the correction. There is however no need for individual action. The individuals concerned will be contacted individually before the change is executed.
Opting out patents
API and get document functionality In accordance with information previously conveyed (see link), a late change to the API was executed shortly before the start of the Sunrise period with the consequence that the “get document” functionality was temporarily impaired. A solution was presented on March 13, which was introduced in the CMS training environment March 17. The solution went into production and is available on the CMS as of March 21.
Will there be further changes to the API?
All other things being equal, no further changes are foreseen for the moment on APIs related to Sunrise activities. This does not prevent us from adapting them if it is deemed necessary to safeguard the proper functionality of the system. In that case, we will inform users as soon as the change is identified.
How to fill in the country abbreviation section of the opt-out form?
We have received a number of questions on the filling in of the Country abbreviation in the opt-out form. Here are a few indications to help you with this process:
For patents in force: all EPC States (not only Contracting States of the UPC Agreement – see FAQ question 4.35) in which the patent is valid need to be filled into the country abbreviation section. More specially, all EPC Contracting States in which the patent is valid at the time of the opt-out application need to be included in this section of the form. This is also applicable to any granted SPCs- meaning that all EPC Contracting in which an SPC has been granted need to be indicated.
For patent applications: when opting-out an EP application, you need to either indicate in the opt-out form: “all EPC States” (when all EPC Contracting States have been designated) or, should only a selection of EPC States have been designated – the list of all these designated EPC Contracting States as per the application.
Please list all countries, as needed, one after the other in the square brackets (rather than one country at a time per square bracket).
Also please note that you do not need to indicate extension or validation states in the country abbreviation section.
Filing of a declaration under Rule 5, paragraph 3(e) RoP:
Please note that the declaration under Rule 5.3(e) RoP needs to be filled by or on behalf of the proprietor(s), independent of information in relevant national patent registers. No additional proof of proprietorship is needed – see FAQs question 4.6. When filling in the section on the postal address of the proprietor: should the address have changed since the time of grant: please indicate the new address (even if this address has not been reflected in relevant national patent registers).
Questions on legal advice
Some of the questions asked to the Registry are of a legal nature and refer to how the Court will eventually interpret the Articles of the UPC Agreement or the secondary legislation. Please take note and respect that the Registry cannot provide advice in this regard, and is unable to provide a substantial response to such questions.
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According to Rule 5.1(b) the request shall be made in respect of all of the states for which the European patent has been granted.
Rule 5.3 does not require to specify the states “in which the patent is valid”.
Therefore, what happens if the request simply states “all EPC States”, as it can be done for the applications ? Would the request be invalid?
Interesting thought – but e.g. Serbia is an EPC state but would not be a state in which an EP patent was granted if it was filed before Serbia became an EPC state.
Good question: according to the Registrar, “all EPC States” should suffice to opt-out European applications, even if Serbia was not an EPC State at filing, so I do not understand why “all EPC States” should not suffice to opt-out European patents.
At any rate, “all of the states for which the European patent has been granted” should be acceptable, at least because it is Rule 5.1(b) expressis verbis.
Can the Registrar add requirements which are not present in the Rules?
Would the Registrar also like to explain why all “older” communication has been removed from the UPC website?
https://www.stjerna.de/pcupc-documents/?lang=en
…and, in addition, would he – or maybe some of his friends from the UPC Advisory Committee? – mind letting the potential UPC users know,
a) on which legal basis the UK is supposed to have “withdrawn” from the UPCA and its protocols,
and
b) on which date this is supposed to have taken effect?
https://www.stjerna.de/upca-uk-withdrawal/?lang=en
Further to the considerations of Mr Stjerna, I came to similar considerations in a post under the following link:
https://blog.ipappify.de/is-after-brexit-the-upc-agreement-compatible-with-eu-law/
I would add that the UPCA does not contain any exit clause.
The VCLT has provisions which apply in such a situation.
They seem to have been carefully ignored.
The whole withdrawal of the ratification by the UK is thus more than problematic for this reason alone.
H.M government informed the Commons and the House of Lords of the withdrawal.
One further question is thus whether the mere information of the parliament is sufficient in order to withdraw the ratification.
The only proper and clean solution would have been to renegotiate the UPCA after Brexit and remove all traces of the UK in it.
This solution was carefully avoided as the chances would have been high that a new ratification procedure would have been the death knell of the whole UP/UPC system.
It is also not clear whether the withdrawal has an ex tunc or an ex nunc effect.
The answer to
“How to fill in the country abbreviation section of the opt-out form?”
Is misleading and as such not acceptable. One may excuse some but not all technical issues with the opt out application with UPC-CMS. A wrong legal answer given by the registrar merits absolutely no excuse.
This answer of the registrar is based on the wrong answer to FAQ 4.28. But in the communication of the Registrar reference is made to FAQ 4.35.
The wording of RoP Art. 5.1b) is unambiguous:
(b) The Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application.
For opt out applications one should add a foot note to the country section like:
“According to the answer of FAQ 4.35 «The application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application, Rule 5.1(b) Rules of Procedure of the UPC».
The answer of FAQ 4.28 «It is necessary to populate the country abbreviation section with all countries where the patent is in force at the date of the application to opt out. All proprietors must be added for each designation in force at the time of application» has been ignored.
Retrieved on March 9th, 2023 from https://www.unified-patent-court.org/en/faq/opt-out-0#faqs .”
In a formal view this “Information from the Registrar” lacks a date and an responsible author. In the meta data of this information there is as editor: Teodora Kandeva. A similar problem is in the «Acknowledgement of Opt-out». the «Acknowledgement of Opt-out» is a document of the editor Franziska Erlmeier. But also this document lacks any digital signature or protection.