The IP Federation has published here Alexander Ramsay’s reply to its letter seeking clarification of the UPC opt-out process. (As reported here, the IP Federation, which represents the views of UK industry in IP matters, had written to Mr Ramsay, chair of the Preparatory Committee of the Unified Patent Court, expressing concern about lack of clarity on issues such as the process for registering EPAs as UPC ‘representatives’ - who can then effect opt-outs without having to submit a mandate - and whether/how administrative formalities staff can make opt-out applications.)

Mr Ramsay’s response included the following points:

  • An EPA with an appropriate qualification will be able to apply to register as a UPC representative during the sunrise period, i.e. the reference in Rule 12 of the draft EPLC Rules to ‘a period of one year from the entry into force’ of the UPC Agreement is to provide a cut-off date, not a start date
  • Arrangements have been made to deal with the expected large number of applications to register as a representative during the sunrise period.
  • Formalities staff (who are not lawyers or qualifying EPAs) will be able to prepare an opt-out application for a representative to file (and the representative will then responsible for the application’s content). Clearly formalities staff may also file an application themselves on behalf of their employer as proprietor, provided they first register as users on the Case Management System (CMS) and file a mandate (and they would be responsible for the application’s content).
  • If the patent proprietor is acting on its own behalf, then if the proprietor is a natural person he will not need a mandate but if the proprietor is a company then any member of staff who is not a UPC representative will need to file a mandate.
  • To avoid mandates being continually signed, there may be a general mandate which will authorise applications by a particular user over a period.
  • All users will need to register as users on the CMS and will have an individual user ID. It is proposed that there will be a strong authentication procedure, details of which will be published on the UPC website in the near future.
  • Application Programming Interfaces (APIs) provided by the UPC IT team will enable organisations to interface their IT systems with the CMS, and up-to-date versions of the API’s specifications are regularly published on the developers’ section of the UPC website. User-friendly guidance through the APIs, and also a list of third-party providers specialised in services and IT solutions for integration with the CMS, will be published on the UPC website shortly.