UPC effectively shortens the period to opt out.

The Unified Patent Court (UPC) is due to open its doors on 01 June 2023. The so-called sunrise period has been provided to facilitate preparations for the new court, but this preparatory period will end on 31 May 2023. 

The sunrise period exists primarily to allow patent owners to opt their patents out of the jurisdiction of the UPC before the court opens its doors on June 1st. By opting out during the sunrise period, a patent owner can prevent an invalidity action being taken in the UPC. While one can opt patents out after the sunrise period, this is not possible if an invalidity action has already been started.

The opting-out of patents has proven significantly more difficult than anticipated, due to the UPC case management system (CMS) having been under-resourced and functioning poorly ever since it went live. The CMS system is now under additional pressure because of the increasing rate of opt-outs as the end of the sunrise period approaches, with many system users experiencing significant delays, timeouts, and even opt-out rejections.

At FRKelly, we have been fortunate to be able to file opt-outs reliably throughout this disruption using our own custom-written software to bypass many of the CMS problems using an application programming interface (API). Our software submits opt-outs (anything from a single patent to several hundreds at a time) to the UPC servers, and retrieves the official receipts as soon as they are processed, even if there is a long delay on the UPC side. This system has proven to be robust and has enabled us to opt out large portfolios reliably over the last week, while many users were unable to file opt-outs via the CMS.  

The UPC has acknowledged the issues and is working hard to increase capacity. But to add fuel to the fire, they have also announced that the CMS will be offline on the last day of the sunrise period (31 May 2023), effectively meaning that all opt-outs not processed by May 30 will be queued until after the start of operations of the UPC on June 1.

Therefore, with the window for opting out reduced and the UPC's IT systems experiencing impediments, it is highly advisable that any opt out is made as soon as possible if it is intended for the opt-out to be made before the end of the sunrise period. 

Clients wishing to opt out their patents should get in touch as soon as possible. While we are confident that we can continue to file bulk opt-outs at short notice, the earlier we are instructed, the better, especially in view of the shortened May 30 deadline for completing the submission of opt-outs. As UPC representatives, we can file opt-outs for any patent owner, whether we are the EP representatives or not. 

More information on opting out of European patents/applications can also be found on our website at: https://www.frkelly.com/library/upc-opt-out. If you have any questions, or wish us to handle your opt-outs before the sunrise period ends, particularly for opting out entire portfolios, please email David Brophy or Donal Kelly.