I have recently visited US patent attorneys in Denver, Salt Lake City and Minneapolis. During my visits, I gave a presentation on the Unitary Patent and the Unified Patent Court. The presentation can be viewed on our YouTube channel.
As cautioned during various deliveries of the presentation, there are expected to be many clarifications to the Unitary Patent and Unified Court systems as we get closer to the go-live date (which is not expected before 2015). The most recent of these clarifications may be found in the publication of the latest draft Rules of Procedure for the Unified Patent Court. These drafts are now available for public comment.
An issue of particular interest during my presentations related to the possibility of opting out of the Unified Court system for conventional, nationally validated, European patents. Rule 5 of the draft Rules of Procedure relate to opting out. Rule 5 clarifies that the opt out should be made for all contracting states in which the European patent has been validated. The Rules also provide (as expected) for the setting of a fee for recordal of the opt out, although the amount of this fee has not been proposed. If the proprietor decides to withdraw the opt out at a later date (i.e. opt in), there will also be a fee for this.
Also of note is a provision that applicants and proprietors will be able to apply to opt out of the Unified Court system for their applications and patents before the Agreement on the Unified Patent Court comes into force. In this case, the opt out will be entered onto the Register on the date that the Unified Patent Court comes into force. This is important since it avoids the potential risk that a delay by the EPO in entering a large number of opt outs onto the Register would mean that actions could be started in the Unified Patent Court before the opt out was entered on the Register, which would then make it impossible for the opt out to be made. This in turn means that there will be a short period after the final ratification of the Agreement on the Unified Patent Court within which it will be necessary to decide on the patents and applications to be opted out and to make the application for recordal of the opt out with the EPO before the Agreement finally comes into force.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.