The Unified Patent Court has announced an optimized API opt-out process will be in place as of 1 March 2023, at the beginning of the sunrise period.
A new set of guidelines and specifications are available on the UPC’s website for developers dedicated to the sunrise period.
The revised process for opt-out via API will be active starting from the second sunrise practice, starting 13 February. The duration of the practice period (which was supposed to end on 24 February) will be extended and last to the end of March. ‘In parallel with the start of the Sunrise Period, all external users can continue to test the new API process for opt-out on a dedicated test environment.’
According to the UPC, the ‘API process for opt-out has been revised to provide the fastest response time possible to the external users. Eventually, this new process will enhance the external users experience for a better usage of the CMS APIs. These changes are implemented based on the external user’s feedback from the 1st Sunrise Practice Period.’
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You have to wonder whether it is sensible for the UPC to be making last-minute changes to the API opt-out process. This is because such a change means that those who have already developed and tested an API will need to make changes to their software and then being the testing process all over again.
Of course, this is only one more problem that those seeking to file opt-outs will need to address. Indeed, it is probably only a relatively minor issue compared to the numerous questions on fundamental issues to which the UPC has yet to provide satisfactory (or even consistent) answers.
For example:
In which (pdf) format must documents be submitted via the CMS? Is it any PDF/A format or, as implied by some comments from the UPC, a PDF/A format that is SEARCHABLE / MACHINE-READABLE? And what is the legal basis in the UPC Agreement or the RoP for the UPC refusing to accept documents filed in the “wrong” (pdf) format?
Which documents need to be signed with an eIDAS-compliant digital signature? Is it just requests (for registration as a representative or for registration of an opt-out) or is it also the accompanying documents (such as a certificate demonstrating a relevant litigation qualification, or a mandate from a patent proprietor)?
From when can patent attorneys rely upon “other qualifications” listed in Rule 12 of the Rules on the European Patent Litigation Certificate and other appropriate qualifications? That rule states that such other qualifications shall be deemed appropriate (under Article 48(2) UPCA) “one year from the entry into force” of the UPCA. Does this mean that such “other qualifications” will NOT be deemed appropriate until 1 June 2023? And when will this be decided and by whom? As a precaution during the sunrise period (or before formal confirmation that their request for registration as a UPC representative has been examined and approved by the Registrar), should patent attorneys obtain and submit mandates from patent proprietors to support all opt-out applications?
Which designated states need to be identified in an opt-out application? Is it just those where the patent has been validated (as might be inferred from RoP 8), or is it all states in respect of which the patent was granted? Or is it a different selection of states entirely? And what about extension and validation states? Also, what is the legal basis in the UPCA or the RoP for requiring the opt-out application to identify the proprietor(s) for each individual state?
With so many important questions remaining unanswered, it is difficult to shake the feeling that, whilst opt-outs are possible in theory, the rules have been designed to make it almost (or literally) impossible for attorneys to know how to file a VALID opt-out. Also, I doubt that I will be alone in concluding that the income recouped from opt-outs is extremely unlikely to amount to a reasonable reward for the huge amounts of time, money and intellectual effort that, collectively, we have expended on trying to figure everything out.
Dear Concerned Observer
R 5(1,b) UPC in the version according to the 18th draft only provided that the opt-out had to be carried out for the UPCA contracting states.
New R 5(1,b) UPC makes clear that the opt-out has to be for all designated states in which the patent has been granted, cf. Art 79(1) EPC unless one or more designations haven been withdrawn before grant, cf. Art 79(3) EPC. The opt-out has to be declared for all designated states irrespective whether a validation is envisaged or has actually been carried out.
According to R 5.4 an application to opt-out = (request to opt-out) can be lodged by right holders themselves or they may choose anyone to do it for them. The previous reference to qualified representative under Art 134 EPC has been deleted This does however mean that the person or entity filing the application for opt-out has to have access to the CMS system of the UPC.
According to R 5.7, the opt-out shall effective from the date of entry in the register. If the requirements recorded in the register are missing or incorrect, a correction may be lodged with the Registry. The date of entry of the correction shall be noted in the register. The opt-out shall be effective from the date of correction.
As long as the Registrar is not satisfied by the content of the Application to opt-out, the opt-out is not effective.
The objective is clear: the opt-out procedure has been made unnecessarily complex so that more patents will be subject to the competence of the UPC from the beginning.
The trouble with RoP 5.1(b) is that it covers ALL “states”, whereas, for granted patents, RoP 8.5(a) defines the “proprietor” as:
“the person entitled to be registered as proprietor under the law of each Contracting Member State in which such European patent HAS BEEN VALIDATED”.
Thus, there are a number of “orphan” states covered by RoP 5.1(b), namely states in respect of which the RoP is silent as to the identity of the “proprietor”.
This lacuna is particularly problematic for patents that have been assigned AFTER lapsing irrevocably in certain states. If it is unclear from the assignment document whether (non-existent) rights in those states have been transferred to the assignee, must an opt-out in respect of the lapsed states be authorised by the original proprietor? If so, how is this possible if the original proprietor was a company that no longer exists?
It should also be mentioned that RoP 8.5(a) only refers to “the law of each CONTRACTING Member State”. This begs the question of whether extension or validating states are relevant to opt-outs and, if so, which law(s) should be used to determine the “proprietor” for those states.