CIPA calls for UPC delay amid ‘concerning’ system issues

Members are “extremely concerned” about accessing case management system | Additional requirements have triggered worry over deadline | EIP.

The  Chartered Institute of Patent Attorneys (CIPA) has called for a delay to the sunrise period of the  Unified Patent Court after its members complained about the requirements for securely accessing the UPC case management system.

In a statement issued by CIPA to WIPR, its president  Alasdair Poore said: “We welcome the UPC coming into operation. It is, however, imperative that those using the UPC have absolute confidence that the system will work from day one.

“Our members are extremely concerned that this will not be the case.”

The UPC is  scheduled to open its  doors on April 1, 2023, but Poore noted that an important element of the launch of the UPC is the right to opt existing patents out of the new system.

‘Stress on the system’

All European patent applications and European patents in UPC states will be subject to the jurisdiction of the UPC when it comes into effect, unless an opt-out is filed.

Poore explained: “Filing an opt-out maintains the existing litigation options and we expect there to be significant demand to do so. With the sunrise period for opting out expected to start three months before the UPC start date, it is absolutely vital that the mechanisms are in place for representatives to file opt-out requests.

“CIPA is concerned that the requirements put in place for securely accessing the UPC case management system (CMS) and electronically signing documents have placed stresses on the system that may be difficult to overcome in the time currently available.”

‘Significant challenges’

The UPC has said that users must be compliant under a new regulation unveiled in 2014, the  Electronic Identification, Authentication and Trust Services (eIDAS). The regulation created one single framework for electronic identification, and is aimed at making it more straightforward to deliver services across the European Union.

But Poore noted that the decision to require eIDAS-compliant access to the CMS has resulted in CIPA’s members reporting “significant challenges” in meeting the requirement, despite working with the leading suppliers of electronic identification services in the UK.

Darren Smyth, partner at EIP, expressed similar sentiments. “The procedure for obtaining eIDAS-compliant access to the CMS is completely opaque, and if the sunrise period is supposed to start within two months, that is unsatisfactory.

“So far, the guidance issued by the UPC has been unclear, and attorneys face doing a lot of investigative work themselves to figure out how to obtain the access that is needed.”

Unproductive investigations

Poore argued that investigations by CIPA and its members had not provided any leads on suppliers who they can be sure can meet the requirements, and that enquiries by potential suppliers had not been productive. These concerns are not limited to the UK, he added.

Mike Snodin, director of  Park Grove IP, said 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.”

At the time that the start date was unveiled in October,  Kevin Mooney—partner at  Simmons & Simmons and chairman of the Drafting Committee for the UPC Rules of Procedure—described the deadline “as deliberately ambitious”.

Mooney also acknowledged the concerns over the UPC technical systems, but said that guidance would soon be issued.

In October, the UPC issued guidance on using the CMS on its new  website.

But Snodin argued that this information simply wasn’t 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.”

Eroded trust

Snodin continued: “The lack of information coming from the UPC has really eroded trust in the profession to the extent that we simply don't know how things are going to work out. And the sunrise period is such a short period: we don't even know how requests for registration of representatives are going to be processed.”

According to Poore, the UPC registry will still need to check all applications from firms who wish to become UPC representatives. “It is not known just how long these checks might take, meaning patent attorneys may have to file opt-out requests on the assumption that their application to become a representative is approved. In a profession driven by legal certainty, this is far from ideal.”

CIPA is now urging the UPC preparatory committee to take the necessary steps to ensure that the beginning of the sunrise period is delayed “until it is clear that these concerns have been addressed”.

Snodin backed this call. “What we need is certainty and clarity, before this sunrise period starts,” he observed.

“If the UPC realises that very few people have a working and secure access, it can't implement this system without shutting out the vast majority of the profession.”

When approached by WIPR, Johannes Karcher—acting chairman of the UPC administrative committee—said: “We are aware of this subject. The UPC will shortly address these questions in more detail on its  website.”