UPC: To stay in, or to opt out?

Tuesday 7 June 2016

7 June 2016

The rules and procedures of the Unified Patent Court (UPC) were tested during a recent mock trial in Paris with the aim of building more experience of the UPC following the 2015 and 2014 events.

The mock trial focussed on the option to opt out of the UPC during the 7-year transitional period.  The trial assessed the validity of a particular opt-out lodged with good intent but containing numerous errors as well as the consequential effects of being locked in to the UPC by a timely filed revocation action against the patentee.  It was clear from the mock trial that identifying the correct legal owner was very important for validly filing the opt-out and for the legal certainty of third parties given that Rule 5 of the current 18th Draft of the Rules of Procedure require all owners to lodge the application to opt out.  A co-ordinated approach between all right holders was therefore highly recommended.

Aside from the main mock trial event, talks earlier in the day were given by those involved in the process of opting out of the exclusive jurisdiction of the UPC.  As an example, Neil Feinson from the UK IPO, who was talking on behalf of the IT Working Group, discussed how the best use of electronic procedures was being planned whilst balancing security, usability and cost concerns.  Neil suggested that the opting out formalities would be possible through a manual user interface (UI) or an automated programming interface (API), the latter being preferred for large numbers.  Neil also mentioned that two-factor authentication through the use of a mobile phone or landline was being considered as opposed to chip card methods but stressed that this was not yet finalised. The main driving force for developing the Case Management System was to find a suitable method of securely registering the opt-out application at a non-human level so that the official cost for filing the opt-out can remain free.

In order to provide our clients with the best possible advice, the UPC team at Appleyard Lees are currently investigating the Beta test site of the Case Management System in order to explore the options available to EP patent right holders.  Any updates on our investigations or on the UPC in general can be expected on our Unitary Patent Package page.

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