The IP Federation (which represents the views of UK industry in IP matters) has reported that it has written to Alexander Ramsay, chair of the Preparatory Committee of the Unified Patent Court (UPC), expressing concern about the current lack of clarity around the opt-out process. Concerns include the process for registering EPAs as UPC Representatives, as well as whether administrative formalities staff can make opt-out applications and, if so, how. In the letter, the IP Federation also urges that, although (as reported here) the December 2017 target date for the UPC’s opening has been pushed back, the sunrise period should open as soon as possible. The points raised by the IP Federation on the opt-out process include the following:
- The beta UPC Case Management System (CMS) now allows a person to apply to be registered as a ‘UPC Representative’ (who can then effect opt-outs without having to submit a mandate). As reported here, a relevant certificate to evidence entitlement must be submitted, and the application will be checked by an individual at the Registry. This raises two concerns. First, most EPAs would apply to register with qualifications under Rule 12 of the draft EPLC Rules, but under Rule 12 those qualifications are only deemed appropriate during a period of one year from the entry into force of the UPC Agreement – therefore, will Rule 12 be changed to allow registration in the sunrise period? Second, if registration only opens when the sunrise period opens, will the limited number of Registry staff be able to check all the applications (from lawyers and EPAs) without causing delays?
- If formalities staff are supervised by an in-house EPA (registered as a UPC Representative), are they able to prepare applications on the EPA’s behalf? If so, are they able to use the EPA’s account on the CMS, or must they use their own (having registered as a user)? If the latter, what mechanism is envisaged to allow one user to prepare a draft application for another user (e.g. the EPA) to submit?
- The beta CMS opt-out application process has two options for the status of the applicant: a ‘registered representative’ (i.e. a UPC Representative), and ‘not a registered representative’ (who must upload a mandate). What is the situation if the patent proprietor is acting on their own behalf? If the proprietor is a company, would any member of staff (who is not a UPC Representative) need to file a mandate?