The Unified Patent Court will finally become a reality, open its doors and start to receive cases from 1 April 2023. This is announced in the implementation roadmap, which was published yesterday by the UPC preparatory team and depicts all the key activities and milestones of the UPC in the coming months.
The roadmap also indicates the Sunrise period will start on 1 January 2023. The following ‘Global milestones’ are mentioned:
- MS call for contribution (PAP)- tbc: call for contribution request to UPC Member States for the Provisional Application Phase (PAP) if needed;
- Germany ratification: the deposit of the UPCA ratification instrument by Germany will trigger the Sunrise period (first day of the following month) and the entry into force of the UPCA (3 months after the start of the Sunrise period);
- Start of the Sunrise: the date of the start of the Sunrise period is expected to be January 1, 2023;
- FAP budget approval & call for contribution: first accounting period (FAP) budget approval by the Budget Committee and subsequent call for contribution to UPC Member States;
- Entry into force of the UPCA: entry into force of the UPCA and the opening of the Court from 1 April 2023.
Recruitment activities will be:
- Judges recruited: legally qualified judges (LQJ) and technically qualified judges (TQJ) are appointed in accordance with decision of the UPC Administrative Committee ;
- Election of Presidents (CFI, CoA): Presidents are elected under Article 13 and 14 of the Statute ;
- Election of Presidium: members of the Presidium are elected under Article 15 of the Statute. There will be four judges from the Court of First Instance (CFI), including the President of the CFI, and 3 judges from the Court of Appeal (CoA), including the President of the CoA;
- Presidents and other Presidium judges’ effective date of appointment: judges elected to be part of the Presidium will be appointed as soon as possible to assume their administrative functions;
- Targeted & General call for judge’s application: following the first recruitment phase, (1) a few positions remain to be filled and (2) preparations are made to increase the number of judges when it becomes necessary by creating a reserve list of LQJs. For these reasons there will be (1) a targeted and (2) a general call for judicial applications;
- Registrar and Deputy-Registrar appointed: Registrar and Deputy–Registrar are appointed by the Presidium and will start their activities preferably before the start of the Sunrise period;
- Administrative staff recruited: administrative staff at the different divisions and at the seat are recruited to start their training and their activities;
- Targeted and General interviews: interviews for both round of calls;
- Appointment of selected judges: additional judges will be appointed to start their activities as from the opening of the court ( or to be placed on the reserve list as applicable);
- Patent Mediation and Arbitration Centre staff recruited;
- Training Center staff recruited;
- All judges’ effective date of appointment: all judges that are not part of the Presidium will be appointed and will start their activities from the entry into force of the UPCA.
Case Management System activities and milestones:
- CMS self-practice: users have the possibility to use and practice the CMS on their own. In case of questions or issues, the UPC is offering a limited support. It is important to point out that the CMS system available is not a production one and therefore no real data or documents should be entered into the CMS;
- Sunrise CMS practice: period during which the CMS system will be accessible to the public with the same functions as from the start of the Sunrise. The system will be cleaned so that users can validate or verify their ability to properly use the system. UPC teams will provide a level of support to the best of their capacities. It is important to point out that the CMS system available is not a production one and therefore no real data or documents should be entered into the CMS;
- Sunrise functionalities open: the Case Management System will be open in production to allow users to register as representatives and to opt-out their patents (manually or through APIs);
- EIF CMS practice: period where the CMS system will be accessible to the public with the same functions as for the entry into force. The system will be cleaned so that users can validate or verify their ability to properly use the system. UPC teams will provide a level of support and interactions to the best of their capacities. It is important to point out that the CMS system available is not a production one and therefore no real data or documents should be entered into the CMS;
- EIF functionalities open: the CMS used for the Sunrise period will be upgraded with “entry into force” functionalities. From 1 April 2023, users will have the possibility to lodge their cases within the Court system.
The UPC can be contacted for any questions here.
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So the Court is due to open on April Fool’s Day. Seems appropriate….
The CMS team had apparently promised a more detailed update this week with further details about the certificate providers the UPC believe are suitable.
Nothing so far.
But let’s not worry about the minor practicalities of actually being able to register and use the CMS. Let’s set a date for opening the Court and the rest will probably take care of itself….
Not sure it is quite correct to call 1 April 2023 “an official date”. Instead, it seems to me that this is the date that is currently PLANNED for the UPC to start operations.
You know what they say about the best laid plans of mice and men. And, given the current chaos relating to the CMS, the current plans of the UPC Preparatory most certainly do not qualify as “best laid”!
I look forward to filing my first revocation action in London!
Everyone remembers that the provisional application phase was meant to last six months.
I share the optimism of Concerned Observer: we will have another official date.
The UPC is not ready, the EPO isn’t either, whatever they pretend.
You are all defeatists.
If the Prep Committee says it will start on April 1st, it will do so.
Who are you to belittle this prediction!
Reality has to coincide with fiction. And that’s it
You will not be allowed to ruin the expectations of the promoters of the UPC.
The big buck in in sight, be it for the big industry, the big internationally active lawyers firms and last but not least for the selected judges!
Don’t try to disappoint the respectable people concerned.
Can anyone enlighten me as to the legal basis for the beginning of the sunrise period during which op-outs can be filed?
I was under the impression that the sunrise period would start as soon as Germany deposited its instrument of ratification. Indeed, it appeared that this view was confirmed by the UPC Preparatory Committee’s announcement in April 2022 (https://www.unified-patent-court.org/news/provisional-application-phase-and-upcs-expected-timeline), which stated that:
“The German deposit will also mark the start of the sunrise period during which it will be possible to opt out existing European patents from the jurisdiction of the Court”.
However, this view is NOT reflected in the Committee’s latest roadmap, which limits the sunrise period to 3 months, and has is starting more than a week after Germany’s ratification.
What is going on here? I cannot see anything in the Provisional Application Protocol, other than the fact that the Registry can be set up before the UPC goes live.
If there is no specific date set down in any rules, then does that mean that the “sunrise” period for the EPO’s purposes (which WILL start as soon as Germany ratifies) will not be exactly the same as the “sunrise” period for filing opt-outs?
The same happend to me. I attended lots of webinars and talks about the UPC (some of them are still on Youtube) – it was some kind of folklore to mention that the sunrise period would start immediately after the final ratification.
Everybody is welcome to provide for a legal basis, however, the crucial time gap is very likely to cover christmas holidays anyway, so let’s relax.
So, when it comes to determining the length of the sunrise period, only the Preparatory Committee gets to decide?
Regardless, I see the announcement of 1 January 2023 as fitting into the pattern that I mentioned on the post relating to the CMS. That is, it is notable that, at 3 months, the duration of the sunrise period is not even one day longer than the absolute bottom end of the range that has been bandied around for the last decade.
So, in addition to making it (virtually) impossible for representatives to be ready to file opt-outs at the beginning of the sunrise period, the Preparatory Committee has given representatives the shortest possible time to file all of their opt-outs before the UPC goes live.
If I did not know any better, I would start to suspect that this pattern suggests that the Preparatory Committee is deploying “dirty tricks” to minimise the number of opt-outs that get filed during the sunrise period. Perish the thought!
A further thought has occurred to me:
If the duration (and even the existence) of the promised “sunrise” period is not hard-coded in rules or laws, does this mean that it would be perfectly lawful for the Preparatory Committee to (accidentally, of course) fail to provide a workable / practical CMS during part (or even the whole) of that period?
This would certainly explain the apparent lack of urgency on the part of the Preparatory Committee with respect to the current dysfunctional nature of the CMS (and the inadequate period of time that remains to sort out all of the issues with the CMS and secure devices).
If there is anything to this, then it would appear that the bag of dirty tricks (aimed at plumping up the UPC’s initial case load) is even bigger than I previously suspected.
I thought the duration of the sunrise period was, in effect, “hard-coded” by Article 89(1) UPCA:
“This Agreement shall enter into force … on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession … including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place”
Thus, the earliest the UPCA can take effect is three months and one day after Germany deposits its instrument of ratification.
Of course Article 89(1) is silent as to what actions are possible during this sunrise period, so unless I have missed something, this leaves the Preparatory Committee a wide degree of discretion to control access to the CMS and the registering of opt-outs during that period. As the commenter above essentially points out, we are reliant on their goodwill to ensure that the CMS is functioning throughout the entirety of that period.
Can anyone point to the legal basis which explicitly grants the possibility of registering opt-outs during the sunrise period, or is it simply “received wisdom” that could be altered at any time by the whim of the UPC Preparatory Committee?
UPC Rules of procedure
Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
12 Applications accepted by the Registry before the entry into force of the Agreement shall be treated as entered on the register on the date of entry into force of the Agreement.
Comments have been closed on the CMS article, The UPC has set up a new test login:
https://auth-secure.unified-patent-court.org/test-smart-card
A new document has appeared on the CMS site, explaining the procedure:
https://www.unified-patent-court.org/sites/default/files/upc_-_strong_authentication_-_how_to.pdf
I would claim that the whole confusion about the sunrise period and its extremely short length is indeed there there to minimise the number of opt-outs that get filed during the sunrise period.
When you also look at the new R 5(1,b) UPC, this rule might also contribute to minimise the number of opt-outs, not only during the sunrise period but all along the transitional period.
Since comments have been closed on the CMS article, I would say the following as reply to “Opt in, opt out, shake it all about”:
It is all very nice that an opt-out can be filed at any time, even while the application is pending and at any time after grant, as long as the opt-out is notified to the Registry no later than one month before the end of the (7 year) transitional period and hence during or after the normal three-month validation period following grant of the patent. However, Art 83(3) makes it clear that an opt-out is possible unless an action has already been brought before the UPC.
And then we come into the considerations of Concerned observer in the CMS article that proprietors are actually faced with a kind of “default opt-in”.
It should rather be a “default opt-out”.
When a designation of a UPC member state is dropped before grant, or if the applicant requests a national prior art in a UPC member state to be taken into consideration, no unitary effect can be requested, then the opt-out should be automatic.
Any proprietor wanting to file an opt-out should therefore not wait to do so but rather do it as early as possible.
I could well imagine first an opposition at the EPO. If the opposition is not successful then an action in revocation could be started before the UPC in the absence of an opt-out. Then the proprietor is caught and will not escape the UPC. Thus at the latest in case of an opposition, an opt-out should be filed, better earlier.
It does not change the fact that the opt-out for all states designated in the patent and not for just the UPC member states makes the opt-out unnecessarily complicated.
It’s more than a coincidence or a happy occurrence. It is part of a system.
Regarding the dubious validity of the construction of the Court not respecting the CJEU’s jurisprudence on what is a ‘common court’, patent applicants would be strongly encouraged to opt-out, while this architecture is validated or not by the CJEU.
Thanks for your reply to my comment on the older article, but what I was asking about was your very specific assertion that “opt-out has to be decided within a month”. I still don’t understand where this comes from and it sounds like confusion with the period for requesting unitary effect.
@Patent Robot,
I don’t think that UPC Rule 5(12) really promises anything with regard to a sunrise period. Certainly it does not promise a particular duration for any kind of sunrise period. Whilst perhaps a more arguable point, it would also not seem to make it legal requirement for the Registry to actually enable the filing of opt-outs prior to entry into force of the UPCA.
All that Rule 5(12) does is make it clear what date of legal effect is given to an opt-out IF it is filed, and then accepted by the Registry, prior to entry into force of the UPCA. Can you see any reason why Rule 5(12) makes it a legal requirement for the Registry to provide a working CMS (and to accept opt-out filed using that CMS) prior to entry into force of the UPCA?
The sunrise period is the provisional application defined by Art. 1 PAP
Article 1 – Provisional application of the Unified Patent Court Agreement
Article 1-2, 4-5, 6(1), 7, 10-19, 35(1, 3 and 4), 36-41 and 71(3) of the Agreement on a Unified Patent Court and Article 1-7(1), 7(5), 9-18, 20(1), 22-28, 30, 32 and 33 of the Statute of the Unified Patent Court shall enter into provisional application among the Parties that have completed the requisite procedure referred to under Article 3(1), upon the entry into force of this Protocol.