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Opting out during the sunrise period at the Unified Patent Court

05 July 2017

The IP Federation is concerned with the current lack of clarity around how the Unified Patent Court (UPC) opt-out process will work during the sunrise period at a practical level, including how our member companies will be able to register their staff both as official UPC Representatives and as users of the content management system (CMS) for the opt-out process. We wrote out this to Alexander Ramsay, chair of the UPC Preparatory Committee. See HERE.

Mr Ramsay's reply follows:

We certainly appreciate how important it is for industry that the processes to be made available on the CMS during the sunrise period will operate efficiently and that the procedures to be followed are as clear as possible. We also appreciate that details of the identity authentication procedure, referred to below and the API will be published in good time to allow industry to prepare.

I set out below responses to the specific matters that you have raised. As a general matter however, we appreciate that administrative actions such as the opt-out are very likely to be performed by formalities staff who are neither qualified lawyers or EPA with additional qualifications. We have therefore tried to ensure that such staff will have access as users for the opt-out applications subject to the safeguards which are set out below.

I now deal with the specific matters you have raised.

  1. We do not read Rule 12 of the draft Decision of the Administrative Committee as preventing an EPA with an existing alternative qualification from registering during the sunrise period. Our view is that Rule 12 simply provides a cut-off date for these applications.
  2. You are correct in your assumption that applications to opt out and to register as a representative will only be possible when the sunrise period opens. We do indeed expect a large number of applications to register as a representative during this period and we have put in hand practical arrangements to deal with these applications efficiently.
  3. All users, including formalities staff who are appointed to make applications to opt out, will need to register as users on the CMS. All users will need to have an individual user ID and the proposal is that there shall be a strong authentication procedure. We propose to communicate details of this procedure on the UPC website in a near future, guaranteeing sufficient lead time for preparations before the sunrise period. You are correct in assuming that there is a two stage process. All users must just register with an ID before then registering as a representative.
  4. It will be perfectly possible for formalities staff to prepare applications to opt out for a qualifying EPA or representative. However it is the user (staff or EPA or representative) who is actually lodging the application who will be responsible for its content and who must provide user identity. Further of course if the user is not a qualifying EPA or representative then a mandate will also be required.
  5. It is not intended that a natural person who is a proprietor of a patent will need a mandate. If necessary we shall make this clear on the CMS. If the proprietor is a company then any member of staff who is not a UPC representative will need to file a mandate. Currently we are considering the form of a mandate and we believe that it will be possible to have a general mandate which will authorise applications by a particular user over a period and therefore avoid mandates to be continually signed.
  6. Organisations desiring to interface with the CMS can do so by adapting their internal IT legacy systems to the specifications of the Application Programming Interfaces (API) provided by the UPC IT team.

Up-to-date versions of the API’s specifications are regularly published on the Unified Patent Court’s website and can be found at the developers section of the site:

The API’s are wrapped within a file containing a set of commands enabling external IT systems to write and read in the CMS, therefore, allowing them to connect directly to the CMS for the upload of opt-outs or for searching the list of opted-out patents.

A user-friendly description for guidance through the API’s will be published on the website in the near future.

Patent owning organizations requiring external expertise to use the API’s will find on the market third-party IP companies specialised in services and IT solutions for seamless integration with the CMS. We shall publish a list of such providers on the UPC website shortly.

  1. Please be assured that the Preparatory Committee wishes to have the sunrise period open as soon as practicable but this depends upon all the formalities for ratification in accordance with Article 89 of the UPC being completed.

I hope that the above responds adequately to your questions. Please do not hesitate to let me know if you would like further clarification.

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