IT issues delay Unified Patent Court start to June 2023

The two-month delay to the previously communicated timeframe was communicated by the court on Monday, and will enable issues with the electronic court case management system to be resolved.

In a statement, the court said: “The additional time is intended to allow future users to prepare themselves for the strong authentication which will be required to access the Case Management System (CMS) and to sign documents. Users will need to equip themselves with both, a client authentication (hard device) and a qualified electronic signature… As strong authentication is required already for the sunrise period the initial timeline seems insufficient in view of the legitimate interests of users who have to find a provider and acquire the required authentication tools.”

The UPC is being set up to provide a dedicated judicial system for litigating new unitary patents. Classic European patents that are not specifically opted-out of the UPC’s jurisdiction will also be subject to the new court system, whereas those that are opted-out will remain subject to the sole jurisdiction of national courts during the transitional period.

Steps to opt-out a classic European patent can be taken as soon as the ‘sunrise period’ for the new UPC system commences. The court has now confirmed that the three-month sunrise period will commence on 1 March 2023, and not 1 January 2023 as the court previously indicated.

Opting out will remain possible beyond the end of the sunrise period up until the end of the court’s transitional period, which will last for at least seven years. However, patent experts at Pinsent Masons have previously warned that European patent owners that delay their decisions on whether to opt-out their existing patents from the UPC’s jurisdiction until after the end of the sunrise period may be exposing their patent portfolios to unintended risks.

The two-month delay to the start of the sunrise period has impacted on the expected timeframe for the UPC to become operational – this is now expected to happen on 1 June 2023, and not 1 April 2023 as the court previously thought.

When the body responsible for setting up the UPC communicated the previous timeframes back in October it published an implementation roadmap that outlined indicative timeframes for completion of the final steps in establishing the court framework. According to the court in its latest statement, the other preparatory work beyond the IT system “is on track and in line with the published roadmap”.

It said: “Secondary legislation, like e.g. the UPC Rules of Procedure, has been adopted. The judges of the UPC have been appointed, the presidium has been formed and the presidents of both the Court of Appeal and the Court of First Instance have been elected and have assumed their offices. The presidium of the UPC has concluded the interviews of candidates for the position of registrar and deputy registrar completing the court’s administration as of the beginning of next year, in time for the start of the sunrise period on 1 March 2023. The functionalities of the CMS have been positively tested. The training of the UPC judges and the clerks is under way. No amendments to the roadmap are required in these areas.”

Beyond the measures listed in the court’s statement, the UPC becoming operational depends on ratification of the UPC Agreement by Germany.

The UPC Agreement requires that at least 13 EU countries, including the three with the most European patents in effect in 2012 – Germany, France and, with the UK no longer a member state, Italy – pass national legislation ratifying the UPC Agreement for it to have effect. 

France and Italy have already ratified the UPC Agreement, along with 14 other EU member states. Most other EU member states also support the UPC project, though three – Spain, Croatia and Poland – have so far indicated that they will not participate in it. The government in Ireland has confirmed that it intends to put the country’s participation in the UPC system to a public vote in a referendum to be held either in 2023 or alongside local and European elections in 2024.

Emmanuel Gougé of Pinsent Masons said that a reliable IT system is essential from ‘day one’ of the sunrise period to enable patent owners to access the system and register opt outs.

He said: “It is a wise decision to postpone the starting date. A robust IT and electronic CMS system will be the backbone of the UPC. It is unlikely in any event that Germany would deposit its instrument of ratification until it is entirely confident that the system is ready for operation.”