The Unified Patent Court (UPC) clarified on Thursday when applications for opting-out EPs from the Court’s jurisdiction when it begins operation on 1 June may be made in hard copy form and not using the electronic Case Management System (CMS). This is in response to the large number of opt-out applications that are being received and concerns that this may lead to overstressing of the CMS.

The rules of the UPC provide that opt-out applications may be made in hard-copy, but ONLY when the Court has established that the CMS is not working.

The communication states that the situation of the CMS not functioning is “currently not at hand”. Applications cannot therefore be filed by hard copy at the present time. It also makes clear that “already communicated periods during which the CMS will be down due to maintenance reasons do not give rise to this scenario, including the maintenance of the 31st May to promote entry into force functionalities”.

However, if the Court establishes that the CMS is not functional, this will be notified on the UPC website. Following any such notification, hard copy applications may be made. They will only be accepted if a strict four-step procedure is followed:

1. The opt-out applications shall be lodged at the Registry of the UPC Court of Appeal during opening hours.
2. All opt-out applications will have to be lodged in a USB stick. (The contents of the stick are detailed)
3. In addition to the USB stick, the filing should contain a print out with an overview of all patents, published applications and supplementary protection certificates (SPCs) which are the subject of the opt-out application.
4. Provision of an e-mail address to which the receipt of the hard-copy filing is to be sent.

Full details of the procedure can be found in the communication here.

It is made explicit that “[i]f the above conditions are not met, opt-out applications filed in hard copy may be considered to not have been lodged at the Registry of the UPC or only at a point of time when these conditions have been met.”

Also, it is important to note that any applications made in hard copy must be supplemented by a filing through the CMS of the application when the CMS is deemed to be operational again. The hard copy application is best thought of as a place-marker allowing the applicant to properly file an electronic application when it becomes possible to do so. The communication does not indicate how soon after CMS is deemed operational that the electronic filing should be made.