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UPC updates – No Opt-out fee for the UPC & more news

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IMG_8533-0A selection of UPC updates on various issues including the latest Preparatory Committee meeting, ratification updates in the UK and Germany and a look at the Case Management System.

  • The Preparatory Committee met last week on 24th and 25th February. A lot of ground seems to have been covered at the meeting and the committee says it is still on track to complete its preparatory work by this summer. The meeting covered the ratification status of member states, the Protocol in Privileges and Immunities, a discussion of various rules relating to the operation of the court, judicial salaries, the Rules of the court fees and recoverable costs and much more!
  • Ratification update – according to the Preparatory Committee meeting notes there are a number of states who are likely to ratify this year and it is expected that the Court will start with more than the basic minimum of 13 states. Presumably this will include the UK….
  • No Opt-out fee for the UPC! – the consultation on the UPC court fees last year seems to have thrown a number of conflicting opinions into the mix. However, one constant seems to have been a push back on the issue of the opt-out fee (and the fee for withdrawing an opt-out request). In response the Preparatory Committee has confirmed (see page 17 of the attached document) that there will now be NO opt-out fee for either requesting an opt-out or withdrawing an opt-out request. The Explanatory Note within the fees document contains a longer explanation of the rationale behind removing these fees. This explanation is reproduced below and, to this ipcopywriter’s mind at least, seems to contain shades of those exchanges that Yes, Minister always used to be so good at…

We now know much more detail as to how the proposed opt-out process will work and that the administration burden rests almost entirely with the applicant. We also know that any cost to the Court associated with the opt-out is related to processing the fee. There is no additional cost for the Case Management System to process opt-out requests if there is no fee. Requiring people to make payment generates costs for the court which would not be needed if there were no fee. So, removing the fee removes the cost; it also eliminates the problem of how to process payments particularly during provisional application and honours the commitment already made to only reclaim administrative costs for the opt-out

  • German Ratification – after a long period of no real news from Germany comes an update from the Ministry of Justice who published a pair of draft bills (1, 2) relating to ratification of the UPC Agreement and implementation of the unitary patent. No specific timescale has been set but most sources seem to think that the bills will go before parliament before the summer. Germany is of course one of the states that needs to ratify the UPC Agreement for the system to go into effect.
  • UK Ratification – the UK ratification process is rumbling on with the UK Statutory Instrument with the Secondary Legislation Scrutiny Committee recently taking a look at the Draft Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016. The secondary legislation will be debated in Parliament on 1 and 2 March.
  • the UPC Case Management System continues to be tweaked. Of interest to European Patent Attorneys is the inclusion of functionality that allows a European Patent Attorney to register as a UPC Representative. A couple of screenshots from the relevant part of the CMS are shown below which indicate that EPAs will be able to select how they are entitled from a dropdown list before being encouraged to upload documents proving that the satisfy the requirements of Article 48 UPCA.

UPC Representation 31

UPC Representation 2

Mark Richardson 1 March 2016


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