As of 13 February, the new version of the Case Management System (CMS) enabled by the Unified Patent Court (UPC) Registry so that potential users of the system can test the tool that will allow them to file any documentation before the UPC.
Although the UPC patent system is expected to not be fully effective until 1 June 2023, said Agreement also provides for the existence of a 3-month period prior to the entry into force during which European patent proprietors and applicants or Supplementary Protection Certificate holders and applicants can begin filing applications to opt-out of jurisdiction over their European patents.
This possibility derives from the fact that, once the system enters into force (which is currently scheduled for 1 June), the UPC will hold jurisdiction, with national courts, in disputes over European (non-Unitary) patents for those states in which the agreement is in force. This means, on the one hand, that the proprietor of a European (non-Unitary) patent will be able to choose whether to enforce his patent in the UPC (and that the court’s decision is effective in all countries adhering to the system) or in one or more national courts (as up to now).
Likewise, third parties who wish to declare the invalidity of the European (non-Unitary) patent may choose to file their claims before one or more national courts or before the UPC. In the case of going to the UPC, if the Court revokes said patent, it will cease to be valid in all the states attached to the system. It is expected that there will be 17 at the time of entry into force.
To prevent this situation from occurring, from three months before the entry into force of the Unitary Patent System, the possibility of submitting opt-out requests, which will become effective at the time of implementation, will open up. According to the current official forecast, the exact date to carry out the procedure is from 1 March 2023 (when the sunrise period is scheduled to begin).
For an opt-out request to be validly submitted, it must be submitted in the name of all those who, on the filing date, are holders or proprietors/applicants in each case. For this reason, the decision to file the application must be made by mutual agreement between all the holders or proprietors/applicants of the same and said agreement must be declared when filing the corresponding application.
ABG IP is ready
As for the procedure in question, this must be done through the aforementioned CMS. From 13-24 February, the UPC will make a trial version available to users for testing, which can be accessed by meeting different requirements, including a double authentication system.
All of them have already been met by ABG IP and we have been able to make practical progress in the use of this tool, the final version of which will be available with the beginning of the so-called “sunrise period”. In this way, our team is already fully prepared and trained to handle our clients’ opt-out requests from the very first moment that said option becomes available.