In our post last week we highlighted a story we’d seen that the UKIPO would be  responsible for the opt-out register during the sunrise period for the Unified Patent Court and that this register would be transferred to the Court’s registry when the court became active.

We’d not heard of this development before so we reached out to the UPC taskforce team at the UKIPO and asked them about the sunrise period, the opt-out register and the UKIPO’s involvement.

We received a reply from Katherine Evans who noted that:

Although the UKIPO has been playing a role in the preparations for the court, and leads on work for the acquisition of a case management system, responsibility for the Register will be handed over to the UPC. The Register will be available on the UPC’s own website.

In 2013 it was widely considered that the UPC’s case management system would be one of the last areas of preparation to be completed before the Court came into being. Therefore the EPO offered to provide an opt-out service for the UPC to cover this period.

However, work has progressed quickly on IT, meaning that the case management system will be ready several months before the Court comes into being. The Preparatory Committee has agreed to provisionally apply the UPC Agreement for a period of at least 6 months before its entry into force. The contract for the case management system will be novated over to the UPC during this period. It has therefore been proposed that the case management system will operate the opt-out before the Court comes into being (the ‘sunrise provision’), as well as after.

Since the case management system is a web based solution it is expected that the UPC solution above will be more user friendly than the previously proposed EPO system which would have required users to upload PDF documents.

Rule 5 of the Rules of Procedure has apparently been amended to reflect that the EPO will not be providing the opt out service during the sunrise period.

Finally, Katherine confirmed that no formal date for the beginning of the sunrise period has been set yet.

As well as the above clarification on the sunrise period and the opt-out, the UK’s UPC taskforce issued a further update last week on progress towards the UPC. Highlights of this update are below.

Preparatory Committee

The Preparatory Committee met on 19 October and discussed the Privileges and Immunities Protocol, a summary of the court fee consultations, and had a further discussion of the rules on mediation and arbitration.

The Rules of Procedure were formally adopted, subject to inclusion of the fees rules and any technical amendments that might be needed. Once available these will be publised on the UPC website.

The Preparatory Committee will meet again on 7/8 December where the focus will be on HR and judicial matters.

IT

The IT team continue their user workshops around Europe. Further details on the user workshops, the IT technical team’s progress, providing feedback online and future case management releases can be obtained via the mailing list at: http://eepurl.com/4J609.

Legal

Preparations for laying legislation to amend the Patents Act are continuing and there should be updates on the legislative timetable soon.

Finance

Negotiations on the court fees continue. There was a meeting in London on 15 October and two further meetings are planned in order to allow a revised fee structure to be discussed at the December Preparatory Committee.

Research

A new case counting exercise (managed by Powell Gilbert) has begun to count the number of patents cases for 2014. The data from this exercise will be used, in part, to determine the UK’s financial contributions for the Court.

Unitary Patent

The EPO Select Committee met on 13 and 14 October to continue discussions on the proposed distribution key for the Unitary Patent. The Committee also gave an opinion on the draft Rules relating to Fees for Unitary Patent Protection.

An official Communiqué of the last Select Committee meeting is available on the EPO website at: http://www.epo.org/about-us/organisation/communiques.html.

Mark Richardson 27 October 2015