Breaking: UPC postponement 'the right thing to do'
Sunrise period extended over concerns about access to court’s case management system | New period and start date announced by Klaus Grabinski and Johannes Karcher | Full details of new timings.
The Unified Patent Court ( UPC) has announced this morning that the start of the sunrise period prior to its full opening has been postponed for two months.
The new date for the sunrise period—which is essentially the period between Germany’s ratification and the coming into force of the Unified Patent Court Agreement (UPCA)—is March 1, 2023.
The sunrise period critically also allows patent owners to opt-out their patents from the court’s jurisdiction before it opens.
The statement was released today, December 5, by Klaus Grabinski, president of the UPC Court of Appeal, and Johannes Karcher, the acting chairman of the court’s Administrative Committee.
The postponement follows growing concerns from industry about the readiness of the UPC’s administrative functionality and IT. In November, the Chartered Institute of Patent Attorneys (CIPA) called for a delay to the sunrise period due to complaints about the requirements for securely accessing the UPC’s case management system (CMS).
New Year’s Day had originally been planned as the beginning of the sunrise period, with an entry into force of the UPCA 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 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 1 June 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.”
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.
In October, 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”.
Preparations for users include a mock trial hosted in the chamber of the Paris Trade Court. A panel of UPC judges composed of Grabinski, Camille Lignières (UPC Paris local division) and Patrik Rydman (UPC technically qualified judge) heard a case relating to the infringement of a patent on solar tiles.
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