UPC update – February 2017

IPcopy recently attended two events that discussed updates to the Unitary patent and Unified Patent Court: CIPA’s “The UPC: Where we are and Why” and the Westminster Legal Policy Forum’s “The future for the UK’s patent framework”.

The CIPA event included presentations from Kevin Mooney (Simmons & Simmons and Chairman of the Drafting Committee of the Rules of Procedure of the UPC), Dr Laura Starrs (UK Intellectual Property Office) and Tony Rollins (CIPA President) and the WLPF event included contributions from Kevin Mooney, Tim Frain (Nokia), Tony Rollins, Matt McBrien (BAE Systems) and Margot Fröhlinger (EPO).

IPcopy has summarised some of the points below.

CIPA Event

Laura Starrs covered the Preparatory Committee’s timetable for the UPC which is broadly in agreement with IPcopy’s post here. At the Prep Committee level it is the recruitment of the judges which is setting the timetable. A job advert was issued last year and the replies were considered before the process was put on ice following the UK referendum result. The Prep Committee is now looking to schedule interviews with candidates.

Once the sunrise period begins Laura Starr recommended that opt-out requests were filed as early as possible so that the system is not over-loaded as the court opening date approaches.

On UK preparations there are few bits of remaining legislation to take care of in respect of the Isle of Man (a Statutory Instrument will be needed and this will be sent to the Privy Council) plus orders to implement the Protocol on Privileges and Immunities (two Orders are required, one in the UK parliament and one in Scotland to cover devolved issues). The Orders have been drafted and will be laid as soon as possible.

On the issue of timings Kevin Mooney indicated that the UK may be aiming to complete UK ratification before the Prime Minister triggers Article 50. This would seem to be an unofficial target though.

Kevin Mooney noted that Germany has had to restart its ratification process after getting it wrong the first time. Although 11 countries have ratified the UPC Agreement, fewer than 11 countries have signed the Provisional Application Protocol.

Turning to the actual mechanics of representation and registering opt outs, Kevin Mooney noted that it will be possible to register as a UPC representative during the sunrise period (due to begin in September). On this point Tony Rollins noted that IPReg is in talks with CIPA to issue the necessary certificates to UK-EPAs to allow them to register as UPC representatives.

When it comes to registering an opt-out, this needs to be done by the person entitled to be recorded as proprietor in each country where the patent has been validated even if this hasn’t been recorded on the EP/national patent registers. All proprietors of all designations need to make the application and so the representative is going to need to undertake some due diligence before sending an opt-out.

It is noted that the representative who lodges the opt-out may not necessarily be the EPA patent attorney of record.

Registering an opt-out will be via the online court system and will need representatives to be registered and to be identified by the system. Clearly, there’ll be some work for IT departments to do in the run up to the sunrise period! Details on the system should be known once the software is handed over for user acceptance testing in April.

If the details on an opt-out are incorrect then the opt-out application will need to be corrected. The opt-out will not however become effective until the correction has been made (it won’t be backdated to the original date of filing).

There are no current plans to teach users about the case management system and Kevin Mooney said this needs to change.

On post-Brexit matters it was noted that that the Gordon /Pascoe mechanism for implementing what was necessary for the UK to participate post-Brexit includes:

1. Ratification;
2. An international agreement between the UK and EU (covering preservation of possibility of damages for breaching EU law and of the obligation to make references to the CJEU);
3. Some consequential amendments to the Agreement.

Kevin Mooney’s preference would be for a specific agreement to be made in order to give certainty (there are some commentators who have suggested that there would be no need for further international agreements beyond ratification).

The impact and concern over rule 286 was mentioned. Rule 286 has a nationality condition that would preclude UK attorneys from representing in the UPC post-Brexit. Apparently work is being done on addressing this issue.

WLPF Event

At the WLPF event Kevin Mooney highlighted two challenges to the UK government post-Brexit: remaining in the UPC (the mechanisms for doing this need to be explored) and remaining in the unitary patent regime. Kevin also highlighted an opportunity, namely that the UK has the chance to be the centre of gravity of EU patent litigation. He also suggested that the UPC could become the first port of call for patent litigation, even before the US .

On the issue of UPC ratification, Margot Fröhlinger and Kevin Mooney at WLPF provided an update. When the UPC opens in December this year Margot Fröhlinger stated that she expects 17 or 18 states to be taking part. As well as the 11 states who have already ratified the following countries will either be taking part or are expected to be taking part:

• UK (ratification procedure to complete before end of March 2017 possibly)
• Germany (parliamentary consent to ratify should be given shortly after the UK ratifies and formal deposit of ratification expected in September)
• Italy (are ready to ratify and they may deposit their ratification at any point now)
• Lithuania (have parliamentary approval and apparently a deadline of 1 July 2017 to complete the process)
• Slovenia (also have parliamentary approval but not expected to ratify within the next couple of months)
• Latvia (expected to ratify before the summer break this year)
• Hungary (will be relaunching their ratification process in the next month or so and may possibly complete by the end of May)
• Estonia (in a preparation phase)

It was also noted that Poland remain part of the unitary patent regulations but are out of the UPC Agreement, Croatia has adopted a wait and see stance and Spain has given no signals at all that the Spanish position will move.

Mark Richardson 7 February 2017