[Update: a week, as probably no-one has said before, is a long time in UPC CMS development…
Since posting the article below I’ve realised1 that the CMS has been updated(!), one of the more obvious changes being that the opt-out section of the CMS has had a bit of a revamp. Some of the issues below are still valid concerns but the overall process looks a little different now. We’ll be reviewing the changes and will report back shortly.]
Although the entry into force date of the unitary patent system is uncertain the official line is still that the Unified Patent Court is on track to open its doors. The suggested start date of 1 December 2017 is almost certainly unachievable now that the UK has called a General Election but a go live date around Spring 2018 seems doable.
In light of the “business is usual” message from the Powers That BeTM attention is turning towards the mechanics of working with the UPC. CIPA has recently started its Getting Practical series of webinars and a future session is earmarked for a practical walkthrough of the Case Management System (CMS) that we’re all going to need to get to grips with.
IPcopy recently sat down to play around with the CMS and has some observations on the system. It is our understanding that the whole system has been developed pretty quickly and a lot of progress has been made in a short space of time which is pretty remarkable. That being said, from IPcopy’s point of view, there are still a number of issues that can be improved upon. We’ve only been looking at a subset of the features of the CMS, namely the opt-out process, so we’re not sure whether the issues below extend across the rest of the system.
What is the CMS?
The Case Management System of the Unified Patent Court will be our portal for undertaking all of our interactions with the Court. It is available for beta testing here.
It should be noted that the UPC’s CMS is entirely distinct from the EPO’s CMS system. EP patent register data is pulled over to the UPC CMS during certain activities but the two systems are separate.
Although the CMS is still in beta testing, IPcopy has a number of questions about the system. It is not clear in all cases whether these issues relate to features that are still being developed, to bugs in the platform that will be ironed out before launch or to finalised functionality.
There is very little feedback given by the CMS by way of warning messages. Compared to the EPO’s EPOline software (which even flags up warning messages when it doesn’t like the type of PDF converter you’ve decided to use), the UPC’s CMS is remarkably silent when you’re using it. As noted below it is possible to process an opt-out request to completion even when you omit certain documents that the system seems to indicate are required.
In light of the limited feedback from the system IPcopy would venture that, in its current build, it might be difficult to tell if you’ve correctly made an opt-out request or if you’ve made an error.
There is no supporting documentation of note, though this may be something that will be added later. In particular, IPcopy hopes that explanatory information will be added against the various fields and check-boxes that you use while entering data. This might improve the usability of the system.
Logging in to the UPC CMS brings up the dashboard:
The left hand menu provides access to the various functions of the UPC. The centre portion of the screen shows tasks that are in progress (“My Tasks”) and also all cases and tasks (“My Cases”). The pending cases in the My Tasks area also appear in the My Cases section.
One of the first noticeable issues is how long the system takes to load up. Given there are probably only a small amount of test users on the system at present IPcopy hopes for a serious speed upgrade when the system goes live.
The second issue with the Dashboard only becomes apparent after a while – there is no obvious delete button to remove pending cases from the My Tasks area.
The process of opting out is of most interest to patent attorneys so we’ll follow that through by clicking Applications (in the left hand menu) > Patent Opt-out (It is noted that the process of withdrawing an opt-out is very similar).
Each time an Opt-out application is selected the following pages loads:
The page summarises the steps that are about to come up and also provides some commentary (see right hand side of page).
Of note in the first paragraph of the commentary is the reference to the need to supply a mandate (“the mandate which must be attached to the Application”). However, as pointed out in a good comprehensive post on the subject by Thorsten Bausch on the Kluwer patent blog, rule 5.3(a)(ii) only apparently requires a mandate in respect of some people that may lodge an opt-out. This mismatch between the Rules of Procedure and the CMS is a little puzzling and should be clarified. It is noted that there is a link to a generic mandate on this part of the CMS.
Starting the process of the Opt-out requires the user to select a “Complete Task” button in the bottom right of the screen (shades here of the old Microsoft OS that required you to hit Start to shutdown!)
Having started the Opt-out process above, the CMS then generates a Case Detail screen that will track the progress of the request.
A provisional case number is assigned to the case and the CMS user then needs to select the “document” icon to the right of the “Applicant Data” entry in order to proceed.
IPcopy has noticed a possible issue here in relation to Admin users. It is possible to enter a firm’s details via the “My Firm” menu item on the Dashboard screen above. Users can then be added or removed from that firm. The Admin user however doesn’t appear to get the ability to process Opt-out requests themselves and, for Admin users, on the page shown in the screenshot above there is no “document” icon and so the Admin user can’t proceed any further.
This issue with the Admin user raises another question. In the EPOline software it is possible for a first user (e.g. in the Records or Formalities department) to load a case up and a second user (e.g. the European patent attorney) to come in, check the case and then sign it before the first user submits the case to the EPO. There appears to be no analogue of this process in the UPC CMS. Does this mean that representatives will have to load up their own opt-out cases? In our tests none of the users associated with our firm were able to see any of the cases that other users were processing.
The next screen that loads is headed “Person lodging this application to opt out on behalf of each proprietor/applicant/holder” and contains a couple of drop down selection fields – see below.
With regard to the drop down selection fields, there is no guidance as to the effect these fields have on the outcome of the Opt-out. Further explanation of the input options on this screen would be appreciated.
The Company/Firm and address fields are not precompiled with any data. It is not clear if this is deliberate or an oversight (it is noted that other Application functions accessible from the Dashboard of the CMS do seem to pull in Firm data). IPcopy notes that the Company name that is input at this point updates both an “Applicant” field and a “Representative” field in the final summary screen.
At the bottom of this screen is a “Declaration and Conditions” tick box that covers two separate issues (the authorisation of the person lodging the opt-out and that each proprietor is entitled to be registered). It is noted that at this point of the process no “proprietor/applicant” data has been entered and so the reference to “each proprietor/applicant named above” is confusing.
Once this section is complete there’s another “Complete Task” button to click. This takes you to a slightly pointless intermediate screen which confirms you’ve just completed an action. It is necessary to close this screen to proceed.
Next up is patent data. The Case Detail page updates with a new line (“Patent Data” plus “document” icon). The internal reference that shows up on this screen is the “Representative’s case reference” entered in the Applicant Data screen above. Selecting the “document” icon next to Patent Data launches the following patent selection screen.
Entering the publication number of an EP patent brings it up as a search result (in the middle of the screenshot). Selection of a search result moves it to the Patent List at the bottom of the screenshot. It is possible to search one by one for further patents and add them to the Patent List such that multiple EP patents have been selected. In our tests the CMS has allowed patents relating to different proprietors to be selected at this point.
As a side note, attempting to select a patent that has already been opted-out will return one of the few error messages the CMS has: “In accordance with Rule 5.10 it is not possible to opt out this patent”.
The error message however appears to reference a rule that talks about trying to opt-out a patent that has already been the subject of a request to withdraw an opt-out rather than saying “this patent has already been opted out”.
Once the patent selection is confirmed a summary screen appears:
Clicking “Complete Task” will take you to the next stage of the process. However, clicking “Edit” brings up a screen that indicates that no proprietor data has been added and selecting the “Add Proprietor” button gives the user the option of entering some data.
It is not clear to IPcopy whether proceeding without adding proprietor data at this point would cause the opt-out request to be invalid. If users are required to enter proprietor data at this point then we would suggest that there should be a direction to do so. There are no warning messages highlighting the lack of proprietor data if you proceed without entering such data.
IPcopy notes that if such proprietor data is required then it will add considerably to the length of the process. Additionally, if the data being pulled into the CMS from the EP Register already contains correct proprietor details then users will effectively be re-entering data.
Having completed the Patent Data section the next section is “Document List” where the mandate document can, presumably, be attached. However, it is possible to just select “Complete Task” without uploading any documents. Although you are notified later that no documents have been attached, no particular error messages are returned regardless of whether documents are added or omitted and it is possible to lodge the opt-out request regardless of the presence or absence of a document.
Review/Finalise & Lodge Application
The next screens encourage the user to “Review or Finalise” the application to opt-out. It is noted however that it is not possible to perform the “Review” action at present since an error screen is returned.
Selecting the “Finalise” action then takes you to the “Lodge Application” screen where the Opt-out request can be formally lodged.
The Case Detail summary screen for the case that’s just been registered now appears as follows:
The “Patent” tab above shows the patent that has been opted-out (or at least the patent you think you’ve opted out!). Expanding the entry (by clicking on the “+” next to each patent number) shows a summary of the EP register data plus the proprietor information that you added in.
The “Parties” tab (see below) shows the information entered up in the “Applicant Data” section. As noted above, the name entered in the Applicant Data section appears as both Applicant and Representative in this screenshot:
The above summary is a quick look at the CMS’s opt-out process. The processes for withdrawing an opt-out and correcting an opt-out request are similar. There is reference to an API on the UPC website (see here) but IPcopy has seen suggestions from other test users that this API is not ready to be used properly yet.
The post above seems to be a long list of issues. It is not IPcopy’s intention to try and pick holes in the CMS – an entire online case management system has been built from scratch after all! – but the operation of the system does seem to have a number of bugs still (case in point, every once in a while the system will throw in some action buttons in Italian…) and would benefit massively from some supporting documentation and also a video walkthrough of the opt-out process.
As mentioned above. the UK General Election is likely to delay the entry into force date of the unitary patent system which, on reflection, may be a bit of a blessing as it will allow the CMS to be worked on for a bit longer and for users to have more time to get to grips with it!
Mark Richardson 9 May 2017
1 Thanks to Alan Johnson at Bristows for highlighting the latest release of the CMS. We’re not entirely sure when it went up. There’s a small chance the post went up just before the CMS change. At least that’s my story and I’m sticking to it!