Kickoff of the UPC: UPC Protocol on Provisional Application now in force

When Austria deposited its instrument of ratification of the Protocol on Provisional Application (PPA)^[1] of the UPC Agreement with the General Secretariat of the Council of the European Union on 18 January 2022, it was the 13th participating UPC member state completing the ratification process for the provisional application of the UPC Agreement. According to the Council of the European Union^[2] as well as to statements by the Preparatory Committee of the UPC^[3], the Provisional Application Period (PAP) thus now is in effect.

Article 1 PPA provides for the provisional application of Articles 1-2, 4-5, 6 (1), 7, 10-19, 35 (1, 3 and 4), 36-41 and 71(3) of the Agreement on a Unified Patent Court (UPCA) and Articles 1-7 (1), 7 (5), 9-18, 20 (1), 22-28, 30, 32 and 33 of the Statute of the Unified Patent Court. This provides the UPC with legal personality in the signatory states to the PPA (Art. 1, 4 UPCA) and requires the setup of Administrative, Budget and Advisory Committees (Art. 11 UPCA). It further allows that the judges can be appointed (Art. 16 UPCA) and that the Training Framework can be set up (Article 19 UPCA). Further, the Patent Mediation and Arbitration Centre with seats in Lisbon and Ljubljana is established (Art. 35 (1) UPCA), for which Mediation and Arbitration Rules now need to be established (Art. 35 (3) UPCA) and a list of arbitrators be drawn up (Art. 35 (4) UPCA).

Of significant importance also is the finalisation of the Rules of Procedure. Art. 41 (2) UPCA requires that the Administrative Committee to be formed adopts the final version of the Rules of Procedure following “broad consultation with stakeholders”. It will be interesting to see how this will be addressed and which changes – if any – will still be made.

Opt out

The PPA does not provide for a provisional application of the opt-out procedure according to Art. 83 (3) UPCA. So, in principle, an opt-out can only be declared as of the entry into force of the UPCA. However, Rule 5 (12) of the (draft) Rules of Procedure states that opt-out declarations accepted by the Registry before the entry into force of the UPCA shall be treated as entered on the register on the date of entry into force of the Agreement. Actually, a sunrise period during which such applications can be filed is planned, though there is no explicit timeframe mentioned in either the UPCA or the (draft) Rules of Procedure. Following statements by the EPO^[4], the Sunrise Period is supposed to start three months before the UPC becomes operational.

The UPC case management system is already online^[5]and in “test phase”. Patentees can acquaint themselves with the opt-out procedure.

Next steps

The Preparatory Committee has stated that “The practical work will start with the inaugural meetings of the governing bodies of the Court, namely the Administrative Committee, the Advisory Committee and the Budget Committee”. A timeframe was not given but it is said that the PAP will last at least eight months. When the UPC member states are confident that the court is fully functional, Germany will deposit its instrument of ratification of the UPCA which will then become operative on the first day of the fourth month after the deposit (i.e. after three to four months), in accordance with Art. 89 (1) UPCA.

Many companies have already decided some years ago which patents they want to take into the new system. Those strategies should now be revisited. Companies who have not yet considered which patents they will carry into the new system should be aware that the UPC has come into existence, and should turn their thoughts to the future. The UPC certainly provides strategic opportunities, but also comes with some uncertainties until there is settled case law. It is now down to the users of the UPC to make this pan-European project a success.

^{_{[1]https://www.unified-patent-court.org/sites/default/files/Protocol_to_the_Agreement_on_Unified_Patent_Court_on_provisional_application.pdf
[2]https://www.consilium.europa.eu/en/documents-publications/treaties-agreements/agreement/?id=2015056
[3]https://www.unified-patent-court.org/news/austria-closes-loop-protocol-provisional-application-upc-agreement-has-entered-force
[4]https://www.epo.org/service-support/faq/procedure-law/upc.html
[5] https://cms.unified-patent-court.org/login}}