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UPC: Protocol, Opt-out, Start Date and Survey

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IMG_8533IPcopy has been busy with reviewing the EPO Guidelines recently and so we are now belatedly reporting a few unitary patent items of interest: the signing of the Protocol, a firm-ish start date and a survey.

Protocol to the UPC

On 1 October in the margins of a Competitiveness Council meeting a protocol to the UPC was signed by representatives of seven member states including France, Germany and the UK. The idea behind the protocol is to allow some parts of the UPC to be applied early so that there can be a smooth transition into force of the Unified Patent Court. Without the protocol then as soon as 13 member states had ratified the UPC Agreement, then both the Agreement and the Court would come into operation at the same point in time which would cause some operational issues.

The Protocol however (copy here) allows certain parts, relating to institutional, financial and admin areas, of the UPC Agreement to be applied early. This in turn will allow the Court to be set up, judges to be recruited and the IT systems to be installed and tested before the doors of the Court actually open for business.


The UKIPO will apparently be responsible before the Court goes live for the sunrise register that will allow European patent owners to register their opt-out requests. The sunrise register will be electronic only and the plan seems to be that responsibility for the register will be transferred at a “touch of a button” from the UKIPO to the Court’s Registry.

The sunrise register is not available yet but should become available sometime after the IT system is finished (early 2016).

Start Date

In its press release accompanying the announcement of the signing of the Protocol, the Preparatory Committee also notes that they aim to complete their work in the middle of next year so that the UPC can begin early 2017.


An interesting survey has been published by Wragge Lawrence Graham & Co. on the unified patent court. The survey collected views on the unitary patent and UPC from a range of respondents including in-house counsel and private practitioners. The survey report is fairly short so well worth a read. Of note it would seem that knowledge of the UP/UPC among private practice clients may still be a little sketchy.

Mark Richardson 20 October 2015

1 Comment

  1. Russell Barton says:

    Regarding the separate sunrise register this move to UKIPO presumably means that current rule 5(13) of the alleged 18th draft RoP

    “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

    is being dropped andthe Registry wont be “accepting” applications early.

    Personally I don’t see that there is a reason for this switch to the UKIPO and dropping 5(13). The protocol doesn’t allow for Art 83 UPCA to take effect early and therefore opt outs can’t take effect before the agreement is in force. However the protocol specifically allows for the Registry to be created early and for it to conduct its duties under Art 23 of the Statute early.

    Those duties are open ended and also include

    “keeping and publishing a list of notifications .. of opt-outs in accordance
    with Article 83 of the Agreement”

    It would seem possible to keep a list of notifications before the opt outs have effect as envisaged by 5(13).

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