A guide to the UPC and the UP - Flipbook - Page 145
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Opt-outs may only be lodged by users of the Court Case Management System. 63 Access to the
Case Management System is based on a strong authentication scheme. This means that in a
first step, users require two certificates (provided by certain Qualified Trust Service Providers –
QTSP under the eIDAS regulation), namely one certificate used for the authentication
(required for the login) and one certificate to electronically sign the documents to be uploaded
in the Case Management System. At least the authentication certificate must be stored on a
physical device such as a smart card or a USB stick. In practice, a number of providers offer
smart cards which contain both certificates required for accessing the Case Management
System. In a second step, users are required to create a user account for the Case Management
System to get access to this system. In a final, non-mandatory step, potential representatives
need to request registration in order to get registered as a representative before the Court.
These requirements for authentication of users of the Case Management System are intended
to prevent opt-outs being made maliciously by persons who are not authorised to do so.
Correcting an Opt-out
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If certain information is missing from the application to opt out a patent or the application is
incorrectly recorded for whatever reason, a correction may be lodged by the proprietor with
the Registry using the relevant form on the Court’s Case Management System. The opt-out is
ineffective until the date the correction is recorded in the Registry. 64
Removing an unauthorised opt-out or withdrawal of an opt-out
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Where a proprietor of a European patent or a holder of an SPC finds that an unauthorised
application to opt-out has been made, they may lodge an application, setting out the reasons.
The application to opt-out or withdraw the opt-out is marked as being subject to challenge. The
decision is made by the Registrar and can be challenged within one month by application for
review to the President of the Court of Appeal. 65
Challenging an Opt-out
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63
64
65
66
67
68
69
In practice, it may be that the defendant does not have to challenge the Court’s jurisdiction if an
opt-out has been registered against the patent, since the Registry will check for opt-outs as
soon as practicable after the SoC has been lodged. 66 The Registry will then give the claimant an
opportunity to withdraw or amend the SoC as appropriate. If, for whatever reason, the claimant
chooses not to amend or withdraw its SoC and the Registry does not press the point, the
defendant will still be able to raise a preliminary objection. The judge-rapporteur will decide the
issue; his decision can include “instructions to the Registry concerning the next step in the
proceedings”. 67 Presumably, such instructions can include a correction in the Registry so that
the opt-out is either voided (so that the proceedings can continue) or confirmed (in which case
the Court should decline jurisdiction). Since a patentee is not going to start an action before the
Court if it has opted out its European patent, a challenge to an opt-out is more likely to arise in
revocation and DNI actions, with the proprietor raising the preliminary objection under r.19
RoP, 68 seeking to ensure that its opt-out is effective. 69
It has been suggested that the Registrar also has to accept opt-outs that have not been uploaded to the Case Management
System but, rather, have been sent by e-mail, fax or post. This is because r.5(5) RoP provides that “The Registrar shall as soon
as practicable enter the Application to opt out in the register” and, as the Case Management System does not require any
action by the Registrar, it may be suggesting that the Registry will have to accept other methods.
r.5(5) RoP.
r.5A RoP.
r.16(1) RoP (infringement actions), r.47 RoP referring to r.16 RoP (revocation action), r.65 RoP referring to r.16 RoP (DNI)
and also, generally, r.260(1) RoP.
r.20 RoP.
See chapter 12 (Written Procedure) paragraphs 12-04 to 12-28.
For further discussion see chapter 12 (Written Procedure) paragraph 12-11.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 135
