The Unified Patent Court is struggling once more with technical issues. In the meantime, the registrar has stated he cannot give legal advice on the UPC’s opt-out procedure.
Two days ago, the court announced that technical maintenance was needed due to technical difficulties, and that the CMS would not be available for three days – starting almost immediately.
‘This maintenance is necessary, amongst other things, to provide a new hosting infrastructure for the CMS. (…) We acknowledge that this communication has been released on very short notice but unexpected technical difficulties force us to take appropriate action in such a swift way.’
According to the UPC, the maintenance period, which is supposed to end tomorrow, will not have impact ‘on the current data or actions that you have performed in the CMS’.
Last month, issues came to the surface as well. Users complained that early applications to become a Representative before the UPC had not been processed. Problems with the secure access to the CMS have earlier led to a two months’ delay of the start of the sunrise period, which had originally been planned for the first of January 2023.
In reaction to the large number of inquiries the court received, a document ‘Information from the registrar’ was published on 24 March 2023, commenting on and explaining the most currently addressed issues since the start of the sunrise period.
Apparently the document left some issues unanswered, particularly concerning the opt-out procedure. On 4 April the follow-up report ‘Further information from the registrar’ was published. But whoever hoped this document would end all remaining doubts was in for an unpleasant surprise: the interpretation of the opt-out procedure up to the UPC, not to me, the registrar wrote.
Any legal interpretation of the UPC Agreement and the Rules of Procedure are ultimately for the Court to make
‘After the news item published March 24 I have received comments and questions as regards some of the guidance provided in this news item and the FAQs, primarily concerning the way of filling in the European patent details’ section of the opt-out template, in particular the country abbreviation section. In view of these comments I am now making it very clear that the requirements of an opt-out are prescribed in Article 5 of the Rules of Procedure. It is up to each and every applicant to make his/her own assessment of these requirements and act accordingly when filling in an opt-out application.
As the Registrar I cannot give any legal advice on the interpretation of Article 5 of the Rules of Procedure. Any legal interpretation of the UPC Agreement and the Rules of Procedure are ultimately for the Court to make.’
Tomorrow evening 8 pm CET the access to the UPC’s CMS should be restored again.
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According to the (first) “information from the Registrar”:
“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”
However, that is contrary to Rule 5 and to previous advice!
By my reckoning the UPC or its spokespeople have now variously told us, at different timepoints and in different speeches or communications, that:
* the opt-out needs to indicate all countries designated in the EP when it was granted (regardless of whether or not it was validated there and regardless of its status at the time of filing the opt out)
* the opt-out needs to indicate all countries in which the EP was validated (regardless of its status at the time of filing the opt-out) – but presumably not any countries where the EP was *not* validated
and now
* the opt-out needs only to indicate countries in which the EP was validated *and* still in force at the time of filing the opt-out
but (in the “Further Information from the Registrar”)
* the opt-out must in any case be filed in accordance with Rule 5 – which may or may not mean filing something in accordance with any one of the above statements, or something different entirely.
What an utter, unforgivable shambles this is.
This should be a total non-issue, and it could have been so easily avoided if the committee which drew up the Rules and put together the opt-out form had included somebody with experience in patent prosecution and grant/validation procedures, who would have been able to flag these issues up. Or at least if the committee had listened to somebody with such experience. According to an article on MIP today, Kevin Mooney has confirmed that no patent attorneys were involved in the process – see: https://www.managingip.com/article/2bhz0fgb4cw55nkg2u6tc/attorneys-told-to-go-it-alone-amid-upc-opt-out-confusion
So the Registrar cannot even conclude on the opt-out issues? Then who can? Leave it to the users, easy way out… sorry, you will need to give clear rules, clear interpretation of the rules, and clear answers to questions of users!!
Initially there were two options to handle opt-outs: either a request could be filed with the UPC for a patent to be opted out, which would require a decision by the UPC, or opt-outs could be registered without examination. The first option would involve quite a lot of work, it would have included a fee for opt-outs and there would be no guarantee that all opt-outs would be registered by the time central revocation actions could be filed in court. The second option didn’t require a fee (because there is no work to be done by the UPC) and it would result in fast registration of opt-outs. The second option was chosen, but this comes with a responsibility for applicants. In addition there is a discussion on the long arm jurisdiction of the UPC, which could follow from the UPC Agreement, the Brussels Ibis Regulation, the Lugano Convention and national law. This may require opting out for more than just the 17 currently participating states. Of course the registrar can’t provide a binding interpretation of the law. That’s nothing new, you can’t ask the registrar of a national court for such an opinion either. Whether an op-out is valid can only be decided by the UPC on the basis of a claim for revocation of a patent.
Dear Mr Pors,
We all know where you stand.
The idea having to pay for an opt-out was a disgrace to say the least.
Now to come and give the monkey to the users is another disgrace.
That the UPC would like to have a long arm jurisdiction is manifest.
All those having lobbied for the UPC, and you are one of those, would like to see it so.
Competence of the UPC is primarily opened to the UPC member states. It is only with some daring interpretations, which run counter to the crystal clear wording of the UPCA, that an extension of its competence can be envisaged.
Countries like the UK, Poland and the Czech Republic will be happy to learn that they might be submitted to the long arm jurisdiction of the UPC, whilst they have purposely refused to enter the game. In the absence of an exit clause in the UPCA, it is even doubtful that the UK has properly left the UPCA.
Rather than discussing whether the UPC has a long arm jurisdiction or not, it would have been much better to renegotiate the UPC and delete any reference to the UK.
However, all the lobbyists for the UPC knew too well that a new ratification was taking time, and might be a death knell for the whole system, so they prefer to discuss a possible long arm jurisdiction and deletion of any reference to the UK with legally extremely doubtful means, like Art 87(2) UPCA.
That the registrar cannot give an interpretation of the law is pretty obvious.
To change the opt-out rules in the hope of a long arm jurisdiction and on top to deliver unclear messages about it is not to put on the credit of the UPC and its lobbyists!
There are lots of open issues and we will see whether the UPC and its “long arm” is at all viable.
You can be sure that enforcing UPC decisions outside the territory of the member states of the UPCA will be heavily challenged.
The UPCA was an “agreement” valid for its member states, not for all EPC member states and even further.
The parliaments having ratified the UPCA have manifestly been misled.
But this is not a surprise. The aim justified the means!
Just have a look at the explanatory note given to the German parliament for the second ratification. The resemblance of this note with some articles published in GRUR Int by another UPC lobbyist is striking.
When the civil servant in the German Ministry of Justice drafting the second explanatory note is presently actingchair of the Administrative Committee of the UPC, nothing more has to be said.
It is going from bad to worse.
Originally the op-out was only needed for UPC member states.
The latest version of R 5(1,b) stipulates that the opt-out has to be declared for all EPC member states at the moment of grant. This means that the opt-out has to be declared for countries for which it was never intended to validate or in which the granted patent was never validated. This is clearly not necessary.
During the transition period, the opt-should be automatic when there is no possibility to request a unitary effect, for instance when the designation of a UPC member state has been withdrawn or there are different claims for at least one UPC member state.
It is difficult to reconcile R5(1,b) in its present wording with the information according to which the opt-out is only required for the countries in which the patent was validated, and on top still in force.
On the other hand, if an opt-in follows an opt-out, the UPC should not obtain retroactively jurisdiction for all UPC or EPC(??) member states in which the granted patent has never produced effects. It would be detrimental for third parties. With an opt-out, they cannot expect to be held responsible for what happened in non validated UPC states. After an opt-in, they can be held responsible for what happened in a non validated UPC state.
The best way to avoid the UPC putting its nose in the life of a patent would be for a third party which could be threatened by a patent to file an opposition at the EPO and possibly a non infringement declaration in a validated EPC/UPC state.
There are lots of open issues with the UPC, not just with the opt-out!
Rather than coming up with stupid statements, the registrar should make everything possible to accelerate the procedure. The opt-out is only effective from the moment as it is registered.
I sometimes think the technical problems with opting out in the sunrise period are intentional – a lower number of opt-outs will be interpreted as ‘patentees eager to participate in the new UPC system’.
It would have been so easy to make ‘opt-out’ the standard and just requesting actions to ‘opt-in’…
An interesting perspective from Mr Pors regarding the handling of opt-outs.
Of course, that perspective rather glosses over the fact that opt-outs were a conscious choice by the architects of the UPC, and were by no means inevitable. It is therefore interesting to consider different perspectives.
Starting at the beginning, there was a choice between opting in to the UPC and opting out. The latter option was chosen … and just so happens to be the one that maximises the UPC’s potential pool of cases (and hence potential income).
Once opt-outs were chosen, the UPC could charge a fee for processing them or could charge no fee. The former option was initially chosen … until it was pointed out that charging patent owners a fee for simply maintaining the legal status quo would be unconstitutional in at least Germany. Thus, it was decided to accept the inevitable and to charge no fee.
Having chosen the option of no-fee opt-outs, there was a choice between examining the opt-outs and not examining them. The latter option was chosen … and just so happens to be the one that most benefits the UPC’s finances. On the other hand, that option is terrible for potential litigants (from the point of view of legal certainty), as no one will know whether any opt-out is valid unless and until it is challenged.
Having designed an opt-out system with an inbuilt level of legal uncertainty, there was then a choice between drafting opt-out rules that a clear, precise and easy to follow and drafting opt-out rules that are unclear, inconsistent and impossible to interpret. The latter option was chosen … and just so happens to be the one that maximises the UPC’s potential pool of cases (and hence potential income).
Then there was a choice between drafting rules for how challenges to opt-outs will be handled or just leaving the UPC to make up its own rules on the fly. The latter option was chosen … and just so happens to be the one that makes it possible for the UPC to maximise its pool of cases (and hence income), whilst again providing an extra layer of legal uncertainty for potential litigants.
Does anyone else notice the recurring theme here? UPC’s fee income maximised, legal certainty for potential litigants minimised.
For me, this all begs the question: will the UPC’s judges have a conflict of interest in deciding upon the validity of opt-outs? If invalidating opt-outs will maximise the UPC’s fee income (and hence increase the job security of the UPC’s judges), then does that not provide the UPC’s judges with a “personal interest” in disputes over the validity of opt-outs?
Regardless of lang-arm jurisdiction or not, fees or not, or whatever other issue may arise, the UPC should indicate how the opt-out form should be filled in. The UPC made the form, and it is their form. Therefore, the UPC should tell us how their own form should be filled in, or at least how the UPC believes that the opt-out form should be filled in.
The current situation is: here is the opt-out form. You should use it, see Rule 4.1 RoP, but we are not going to tell you how.
This situation is ridiculous and unacceptable. Mr. Ramsay is ducking his responsibility.