UPC: Cutting it fine with a 3 month Sunrise Period

01 February 2017

Morag Macdonald

The UPC Preparatory Committee have now made it clear that it is their ambition to have the UPC functioning by mid-December this year. Whether or not this will actually happen this time is impossible to predict. The consequence of this ambition though is that the Sunrise Period for opting patents out of the system has been shortened from 6 to 3 months. Bearing in mind what is required to register an opt out some may think that this is cutting it a little fine. To be fair we will have 3 months' warning that the Sunrise Period is about to start since there is a very specific trigger for the UPC implementation phase that will start 6 months before the UPC opens for business. Practically speaking though these first 3 months could be the summer months of June to August and therefore it might be worth making a few contingency plans.

3 months may sound like a long time in which to sort out the opt out registration process so why worry? It's not as if the UPC is going to be charging for this anymore. The real issue is the requirement that the opt out must be applied for by the legal individual who is the legal owner of the patent which so often is not the same as the individual who is the owner as identified on the Register. It will be necessary to provide the UPC opt out registration system with documentation demonstrating that legal ownership and that is something that will be checked before registration is allowed. This means that patent owners who wish to opt out those patents will need to have done their audit to establish legal ownership of their patents and be ready to file the necessary documentation and information on applying for opt out as early as possible in the 3 month Sunrise Period so that there is sufficient time to deal with any queries that are raised. The critical thing to bear in mind that an opt out is only effective once it is registered and therefore you have to make sure that you have allowed enough time for this registration process. And nobody knows how many applications to opt out will be made and therefore whether there will be sufficient staff to deal with all of them in time. The only thing we can safely predict is that the sooner in the period you file the opt out application the more likely it is that you will get registration before the UPC opens its doors and you face a centralised attack on your opted in patent. 

So that’s why 3 months may be cutting it fine…