How to prepare docketing systems for the UP

October 27, 2017

‘As the UPC team has developed a case management system, it is time to get docketing systems ready for the Unitary Patent,’ says Bart van Wezenbeek, European Pateattorney at V.O.

Guest blog by:  Bart van Wezenbeek

A docketing system in the field of patents should be able to harbour the prosecution file of patents of all origins and to deal with all the time limits that are involved with the filing, prosecution and maintenance of such patents.

With the prospect of the new European system, where it will be possible to obtain European patents with unitary effects (Unitary Patents, UPC, changes to the existing docketing systems are needed. One of the major changes is that the process of filing a request for unitary protection and the maintenance of the UP should be introduced into the docketing system. This means that the existing docketing algorithms that are triggered by the granting of the European patent should now also provide for the time limit to request unitary protection.

Combining two systems
Next to this, it should still be possible to accommodate the existing old-style EP bundle patents next to the unitary EP patent. Even for countries that fall within the unitary protection territory (such as The Netherlands) an old-style bundle patent can still be possible and necessary (in the case of The Netherlands for covering the non-UP regions of the Dutch Caribbean Islands).

Further, the docketing system should also reflect for which countries the unitary protection has been obtained. This is especially important at the start of the system when not yet all countries participate.

Appeals have to be filed with the UPC, which has very short timelines in respect of appeals against decisions denying the unitary protection.

Short appeal timelines

The docketing should also be equipped with all the procedures for appeal against decisions of the European Patent Office relating to the request for unitary protection and to other decisions of the EPO on the maintenance of the UP. It should be noted that these appeals have to be filed with the UPC and that there are very short timelines in respect of appeals against decisions denying the unitary protection.

Further, it should be realised that all procedures before the UPC, including the infringement and revocation procedures, can now be conducted by the (qualified) European patent attorney. Accordingly, a docketing system that should be equipped for use by a European patent attorney should also be able to accommodate for all of these procedures. This obviously should contain all the timelines for the procedures in first instance but also the UPC appeal timelines.

Opt-out or opt-in
A special procedure is the opt-out request which should be filed with the UPC. The docket system should contain a filed indicating whether or not an opt-out for a specific European patent (or application) has been requested. This information should be available, because an opt-in would again be possible, but once. It should also be distinguished whether such an opt-out is filed as a (UPC) representative or as a non-representative or employee. In the latter case a mandate form (each of) the patent proprietor(s) is needed.

For any communication with the UPC courts and registry, a UPC case management system has been established. It would be useful if a docketing system could ‘communicate’ with this case management system in order to minimise mistakes in the typing of numbers and names.

For this reason the UPC team has developed the possibility that automatic data communication can take place through an application programming interface (API). Such an API still will be need to be built by the user and since the case management system that is now available on the internet is an almost finished beta test system it now is time to start developing such an API.