On Monday 27 February 2023, the Unified Patent Court (UPC) published practical information about its launch of the so-called 3-month Sunrise period beginning on 1 March 2023 at 9:00 am CET.
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General information about the UPC
For your information, the UPC is inclusive of judges from all participating EU Member States. In which, there will be 17 states which will have ratified the Agreement on a UPC (UPCA) over 24 states which signed the UPCA. It will decide in particular on the infringement and validity of both Unitary Patents and classic European Patents. You may find its Courts of First Instance in 14 countries, the Court of Appeal in Luxembourg, the Training Centre in Budapest, Hungaria and the Patent Mediation and Arbitration Centres in Lisbon, Portugal and Ljubljana, Slovenia.
https://www.unified-patent-court.org/en
Sunrise period
Prior to the opening on 1 June this year, the UPC prepared for the expected massive opt-out filings by setting a 3-month Sunrise period. The users may opt-out European patents and register as a representative before the UPC as of the start of the Sunrise period and throughout the transitional period under art. 83(1) of the UPCA. Furthermore, during this period, the (1) qualified lawyers of a Contracting Member State (art. 48(1) UPCA) and (2) European Patent Attorneys, entitled to act as professional representatives before the EU Patent Office and qualified as per art. 48(2) UPCA and the EPLC rules can register as a representative before the UPC. Both functionalities will be available on the Case Management System of the Court (CMS) via its portal here as of 1 March at 9:00 am CET. https://cms.unified-patent-court.org/login
https://www.unified-patent-court.org/en/news/practical-information-upcoming-launch-sunrise-period
Filling an Opt-out
According to art. 83(3) of the UPCA, applicants for and proprietors of a classic EU patent, holders of a supplementary protection certificate (SPC) issued for a product protected by a classic EU patent can opt out their application, patent or SPC respectively from the exclusive competence of the Court. As a result, the UPC will have no jurisdiction concerning any litigation related to this application, patent or SPC. Accordingly, this option does not apply to the Unitary Patent.
Conditions to validate an opt-out:
- The patent applicant, proprietor or SPC holder can make the opt-out solely in respect of all states where the competent patent office has granted the EU patent or the patent application, proprietor or SPC holder designated in the application;
- An opt-out is only possible provided that no action has been brought before the UPC in connection to this application, patent or SPC (Therefore, the withdrawal of this opt-out is available as long as no action has been brought before a national court.);
- The applicant can only conduct the opt-out via the CMS. It implements all procedural requirements for an opt-out or a withdrawal of an unauthorised opt-out pursuant to Rule 5 and 5A of the Rules of Procedure of the UPC https://www.unified-patent-court.org/sites/default/files/upc_documents/rop_en_25_july_2022_final_consolidated_published_on_website.pdf. You can find further guidance on the application to opt out in the CMS.
https://www.unified-patent-court.org/en/registry/opt-out
For more IP news on AstraIA Gear: https://www.astraiagear.com/2023/01/13/how-to-use-ai-to-protect-your-intellectual-property-rights/