UPC postponement ‘the right thing to do’
Few people relish or even like a looming deadline, but when it comes to getting ready for the launch of the long-awaited Unified Patent Court (UPC), lawyers can be forgiven for being more apprehensive than most.
The pressure has mainly arisen from growing concerns over accessing the UPC’s case management system and the potential difficulty in finding a supplier who can facilitate the requirements for the authentication process.
In response to these concerns, the opening of the much-anticipated UPC will be delayed by two months.
The announcement was made on December 5 by Klaus Grabinski, president of the UPC Court of Appeal, and Johannes Karcher, the acting chairman of the court’s Administrative Committee.
This follows calls from the Chartered Institute of Patent Attorneys (CIPA) for a delay to the sunrise period after its members complained about the authentication requirements for securely accessing the CMS.
The new date for the sunrise period—essentially the period between Germany’s ratification and the coming into force of the Unified Patent Court Agreement (UPCA)—is now March 1, 2023.
This period critically allows patent owners to opt-out their patents from the court’s jurisdiction before it opens.
New Year’s Day had originally been planned as the beginning of the sunrise period, with an entry into force of the UPCA, the court’s official opening, on April 1, 2023. The new date for entry into force of the UPCA, is June 1, 2023.
The ‘right thing to do’
CIPA president Alasdair Poore welcomed the news. “The decision by the Preparatory Committee is absolutely the right thing to do, to give sufficient time for the strong authentication system to be fully tested before the sunrise period for opt-outs commences,” he said in a statement to the press.
“We applaud the Committee’s consideration of the issues raised by CIPA and others. We also appreciate that this was not a straightforward decision—users are in the process of planning for the court opening, and that also includes managing the grant of existing EP applications to take advantage, where desired, of unitary effect.”
He continued: “The delay itself doesn’t alleviate our concerns, but gives the time needed for the system to be fully tested before the court goes live. This is welcome given the newness of the CMS and the use of strong authentication.”
Time added for CMS authentication process
The UPC said that the additional time is intended to allow future users to prepare themselves for the ‘strong authentication’ that will be required to access the CMS and to sign documents.
It explained that users will need to equip themselves with both a client authentication (a physical authentication device) and a qualified electronic signature. Essentially, this means that in order to access the CMS, users will need two certificates (awarded by certain qualified providers).
“The delay itself doesn’t alleviate our concerns, but gives the time needed for the system to be fully tested before the court goes live.” Alasdair Poore, Chartered Institute of Patent Attorneys
The UPC has said that users must be compliant under a new regulation unveiled in 2014, the Electronic Identification, Authentication and Trust Services or eIDAS regulation, which intends to make it more straightforward to deliver services across the European Union. Further information on the authentication is published on the UPC’s website.
The UPC has also published a list of providers that meet the required technical standards to provide this authentication, which will be added to as more providers come on board.
The UPC said that, because strong authentication is required for the sunrise period, the initial timeline “seemed insufficient in view of the legitimate interests of users who have to find a provider and acquire the required authentication tools”.
It added: “As all other preparatory work is on track and in line with the published roadmap we expect no further delay of the start of the UPC beyond June 1, 2023.”
Poore added: “The extra time will allow potential suppliers to test and evaluate their products properly against the UPC requirements and hopefully take whatever action is needed to ensure compliance, and, in turn, to provide choice for users and their attorneys—essential to ensure that users have the benefit of competition as well as alternative solutions. This cannot be guaranteed but we are in a better place now suppliers have the time.
“We now look forward to further guidance being issued so that attorneys can secure the services of compliant suppliers and work with the UPC IT support team to give confidence that the system works as intended before the start of the sunrise period. Given the importance of the UPC to the IP ecosystem in Europe, it is essential that the system operates effectively from day one.”
Eroded trust
In October, the UPC issued guidance on using the CMS on its new website. But Mike Snodin, director of Park Grove IP, argued that this information simply hadn’t been comprehensive enough.
“The UPC provided very little information—and completely inadequate information, as it turns out. It simply placed the burden on the profession to work out which providers may or may not be able to help.”
He added that the requirement to be eIDAS-compliant had “come as a surprise” and he had found only one supplier, LuxTrust based in Luxembourg, that could offer the services required.
“Quite frankly, the switch to eIDAS was an interesting choice and not necessarily one that the UPC had to make. But when making that choice, they could and should have investigated the market available for services, and confirmed the feasibility of imposing the requirements that they were going to ask for.”
This lack of information, he argued, had “really eroded trust in the profession”.
In the same month, Kevin Mooney, chairman of the Drafting Committee for the UPC Rules of Procedure, told WIPR that the court’s “deliberately ambitious” timetable “may slip for good, practical reasons”.
Postponement ‘not unexpected’
Leythem Wall, director and European and UK patent attorney at Oxon IP, told WIPR that the UPC’s decision to push the start date for the sunrise period back by two months is “not unexpected, considering the current feedback on the authentication requirements for the CMS”.
“Overall, this is probably the right decision,” he added. “Users will want to feel secure in the timely handling and registration of opt outs and representation rights. We wish to see the court get off to a flying start, and considering the previous delays we have seen, another few months will make relatively little difference.”
In its announcement, the UPC also confirmed that secondary legislation—such as, for example, the UPC Rules of Procedure—has been adopted; judges have been appointed; and the Presidium has been formed, which makes decisions on the basis of a majority vote.
The Presidium is composed of the president of the Court of Appeal (Grabinski) who acts as chairperson; the president of the Court of First Instance (Florence Butin); two judges of the Court of Appeal; three judges of the Court of First Instance; and the registrar as a non-voting member.
In addition, the presidents of both the Court of Appeal and the Court of First Instance have been elected and have assumed their offices, confirmed the court.
It also confirmed that interviews of candidates for the positions of registrar and deputy registrar have now been completed, the case management system has been tested, and training of the UPC judges and clerks is underway.
“No amendments to the roadmap are required in these areas,” said the UPC.
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