The Eversheds UPC team attended a teach-in session in Luxembourg on 17 November 2015 with the providers of the UPC Case Management System ("UPC CMS"), which is currently in alpha testing. The objective of this session was to obtain feedback from potential users for further improvement of the system. Key issues raised at the session were:
- during and after the sunrise period, opt-out applications will be filed and managed through the UPC CMS. Once the application is filed, there will be no further examination and the opt-out will be published in real time on the UPC website.
Discussions on or rectifications of an opt-out will have to be managed and resolved post-publication, either by way of the correction procedure under Rule 6.5 (18th draft of the Rules of Procedure) or by way of a preliminary objection to the Court's jurisdiction under Rule 19. This could cause legal uncertainty as to the reliability of a published opt-out, and its date of effect.
In addition, whilst Rule 5.12 requires the Court to notify the European Patent Office ("EPO") and the national patent offices of any opt-outs entered into the Register of the Court, the EPO has not yet decided whether it will incorporate this opt-out data into the online version of the European patent register (at https://register.epo.org).
- as matters currently stand, it will not be possible to file an opt-out application for multiple patents at the same time. The IT systems architects are working on the incorporation of "basket opt-out" functionality, but the basket is likely to be limited to 10 - 30 patents/patent applications. For big companies who intend to opt-out large portfolios, filing an opt-out application will be time-consuming and administratively onerous.
- to access the UPC CMS, no authentication will be required. Access will be granted by submitting contact details, subsequently followed by receipt of an email and verification code. Given this basic level of security, there is the possibility of mischievous or abusive actions or applications being filed without proper authorization from the apparent applicant. For example, in the case of a co-owned patent, it could be that an opt-out application is filed by one co-proprietor, without the knowledge of the other co-proprietors, even though Rule 5.1(b) requires the consent of all co-proprietors for a valid opt-out.
- the defendant in UPC proceedings will only receive notification of the claim by e-mail (without copies of the relevant pleadings filed at Court). The defendant will be asked to log in to the website in order to review the claim. However, this will only work if a correct email address for the defendant is known to the claimant. We understand that, for this reason, the relevant pleadings will also have to be sent to the defendant by post by the Registry.
- currently, the only means of payment of the relevant fees (including the opt-out fees and Court fees) will be by credit card. The IT system architects are looking at other payment possibilities (such as bank transfer or the creation of a deposit account at the UPC). Payment by credit card may be impractical in light of the substantial opt-out fees associated with a large portfolio, or the potentially substantial Court fees in the event of a dispute (the current fee proposals envisages fixed Court fees of up to EURO 20,000 and value-based Court fees of up to EURO 220,000).