Insights: The UPC: Where We Are and Why

Some guidance on the current status of the Unified Patent Court (UPC) and its implementation was provided by Laura Starrs of the UKIPO and Kevin Mooney of Simmons & Simmons in a CIPA seminar in London on 31 January 2017.

In terms of the intended timetable for the UPC, the Provisional Application phase is expected to start in May 2017. This provides a legal framework for the appointment of judges, and other such matters which need to be in place prior to the opening of the Court. The Court itself is expected to open its doors for business in December 2017. A sunrise period of three months or so is expected to commence in early September 2017 before the UPC becomes fully operational. During this period, patent proprietors will be provided with a window of opportunity to ‘opt out’ their patents from the jurisdiction of the UPC if they would like to do so.

This timetable is only provisional at this stage because it depends on when both the UK and Germany finally ratify the UPC. Ratification by the UK is expected around March 2017, and German parliamentary consent to ratification is expected around May 2017.

Further clarification was also provided regarding UPC opt outs. One important point is that a granted European patent bundle may only be opted out by the patent ‘proprietor’. Importantly, it is not the registered proprietor listed on the various patent registers that is relevant for an opt out application, instead it is the person entitled to be recorded as proprietor in each country where the patent has been validated, even if not in fact registered. If there are joint proprietors, all proprietors of all designations and the holders of all existing SPCs must make the application together. When filing an application for opt out, it is therefore necessary to certify that the person lodging the application is authorised by all ‘proprietors’, and a mandate for this purpose must be uploaded if this person is not an authorised UPC representative. An opt out application must also include a declaration that no action has been commenced which would prevent the opt-out (i.e. a UPC action).

There remains no official fee for a patent opt out, and the opt out application process may seem to be a simple form-filling task. However, if any proprietor details are missing or incorrect (e.g. if the application is filed in an old name of a proprietor), the opt out will be ineffective until such time as it is corrected. An erroneous opt out application of this kind could potentially leave a company’s most crucial patent open to central revocation by means of the UPC, contrary to the company’s intention. Therefore, it is important to carefully consider the details of UPC opt outs before filing.