UPC Rules of Procedure take effect

The updated Rules of Procedure of the Unified Patent Court, which took effect on 1 September, include a number of important new provisions, most importantly in relation to opt-out and transparency of decisions, according to patent law expert Sarah Taylor of Pinsent Masons.

The UPC is expected to become operational in early 2023. The UPC will have exclusive jurisdiction for disputes relating to infringement and validity of new unitary patents (UPs). It will also have exclusive jurisdiction for classic European patents (EPs) unless they have been ‘opted out’, in other words removed from the jurisdiction of the new court system. There are advantages and disadvantages to patents being subject to the UPC’s jurisdiction that each business has to consider in respect of each of the EPs in its portfolio.

“One of the most important changes to the rules relates to the requirements for opting a patent out of the UPC,” said Taylor. Amendments to the rules now require an application to opt out, or an application to withdraw an opt-out, to be made in respect of “all of the states” for which an EP is granted, or an EP application is designated.

This means that an application to opt a patent out of the UPC must be made not just in respect of UPC contracting member states, but also in respect of all non-UPC states, i.e. other EU states such as Poland and Spain that are not participating in the UPC, and non-EU European Patent Convention (EPC) countries such as the UK, Switzerland and Turkey. 

“For patent owners, the practical effect of this will be that more due diligence is likely to be required to ensure that all proprietors sign the opt-out application, and so enquiries to verify ownership should be undertaken now, before the sunrise period, during which patentees may start filing applications to opt patents out of the UPC, commences,” said Taylor.

The updated UPC Rules of Procedure also includes a rule to address unauthorised opt-outs or withdrawals.

Taylor said: “The new UPC Case Management System, which will be used to file opt-outs, will naturally have some limitations. In particular, identity checks on the proprietors listed in an opt-out application, or an application to withdraw an opt-out, will not be conducted. There has therefore been concern that there could be illegitimate as well as mistaken opt-outs or withdrawals.” 

This has now been addressed by the inclusion of a new rule which permits a patent proprietor to apply to remove an unauthorised opt-out or withdrawal of an opt-out. An application to remove an unauthorised opt-out, or withdrawal of an opt-out, must be accompanied by reasons and, if accepted, the unauthorised opt-out or withdrawal will be deleted.

“The inclusion of this mechanism in the rules will provide comfort to patentees, alleviating some concern that patents may be exposed to attack either out of or in the UPC as a result of an unauthorised opt-out,” said Taylor.

With transparency being a core pillar of the UPC, there has been much discussion over whether decisions of the court should be publicly accessible. Recent amendments to the UPC Rules of Procedure now provide that orders and decisions issued by the court will be published automatically, after redaction of any personal or confidential information. However, underlying pleadings and evidence will now only be made available “upon reasoned request”, following, where applicable, deletion of personal data. 

“These changes are also very important, and transparency remains a relatively controversial area,” said Taylor. “However, the amendments to the rules in this respect show that the court is aiming to strike a balance between preserving the confidentiality of data and allowing access to decisions of the court. Access to UPC decisions will be important for businesses, particularly in the early days of the court as the case law develops. It will be interesting to see how these rules operate in practice once the court becomes operational.”