Q&A on the UPC CMS – with UPC IT team

These questions were originally sent to the UPC IT Team on 20 January 2023. The answers, from the UPC IT team, were collected on 26 January 2023 by the epi UPC advisory committee.

A number of questions were submitted by CIPA members.

It is also important to note that a second CMS Sunrise test period will be opened for two weeks, from 13-24 February when users will be able to practice the functionality of the system.

Accessing CMS Account/Strong Authentication

Q: We’ve had issues using the Belgian ID card on some laptops but not others for accessing the UPC CMS. However, no issue when accessing Belgian government sites. Is there something you can do to ensure better cross-compatibility across different hardware, software, and browser setups?
A: The CMS IT team needs more information on each situation to be able to help (browser settings, ID card obsolescence, certificate expiry, middleware issues).
The IT team asked for more specific examples of issues and experiences. Examples were given around issues with compatibility and internal security. The response of the CMS IT team was that the certificates on the cards issued may not all be the same or up to date. They asked users to test the cards before they intend to use them. Any middleware issues should be resolved internally.

Q: The LuxTrust card I have appears to certify my identity and that of my company, it provides a green positive response when I test it on the UPC website. Can I use this to log in to the UPC CMS and apply to be a UPC Representative and apply for opt-outs
A: The CMS IT team reported that, yes, you can use this to log in. For any issues, the CMS IT team needs more information on each situation to be able to help (browser settings, ID card obsolescence, certificate expiry, middleware issues).

CMS Account

Q: Will I need to create a new CMS account on 1 March when the Sunrise version of the CMS goes live? In other words, if I successfully created a CMS account with strong authentication in December 2022 during the first test phase that was linked to my smartcard, will I need to re-register on 1 March 2023 or will the system remember my account?
A: The new system will require a new registration after the test period. Any current registrations are for the test period only.

Q: Connected to the question directly above this, if I need to re-register an account on 1 March 2023, will my previous account be automatically deleted?
A: Any test account will be deleted once the operational system becomes operational. You will need to re-register.

Q: Does an individual need their own CMS account to be able to apply to be registered as a UPC Representative? Or can a CMS account owned by Attorney A be used to submit an application for Attorney B to be registered as a Representative?
A: Individual certificates are required (no concept of association). Every attorney/representative should use their own access and will need to register their own account. Delegation is not foreseen for the time being and a group of representatives is not possible for now.
EPI raised several concerns with this approach. EPI commented that attorneys will delegate tasks to paralegals, and paralegal teams tend to be appointed to implement attorney decisions in IT systems.

Q: Will the Sunrise version of the CMS allow opt-out applications to be prepared in one CMS account and then signed and lodged from another CMS account? i.e. will it allow the workflow to be shared between two users?
A: Transferring a case to another representative should be checked by the IT team too. Currently, it is not possible.

Q: Is it possible for Associations (consisting of a pre-defined group of UPC representatives) to be entitled to act via that association using a single account/smartcard so that communications can be received/sent centrally?
A: Currently there is not a clear way for this to be processed. UPC does not plan to develop any associated functionality for the time being (nothing will be in place at entry into force)
EPI shared concerns and pressed the importance of a resolution to this point. It added that a group of representatives could be involved, e.g., a lawyer can also be assigned to represent in addition to the attorney. EPI also asked what the process would be if an attorney left their firm whether the cases on the CMS system leave with them? There is not a clear process for successors/firms to access the case files or transfer cases after an attorney has left. EPI requested that this topic is investigated further by the UPC IT team as major cases will always involve several attorneys (access right functionalities).

Q: I have an account with the CMS version. Will I need to start a new account on the CERUS version or will I be able to login? If I have to start a new account, can I use the same email as before?
A: Yes, you will need a new account. The same email address can be used on both accounts.

Q: What happens if the UPC representative is incapacitated and cannot log in?
A: UPC IT team proposes to answer at a later stage as there is no process currently.

More follows below…

Notification about activity on a CMS Case File

Q: How can we expect to be notified, if an action is filed at the UPC in relation to a European patent on which we are listed as representative – either UPC representative or EPO representative (e.g. where there is no listed UPC representative)? Might we be notified by e-mail, or do we have to check our UPC CMS account every day, for example?
A: The CMS will send an email to inform the representative about any case evolution (linking to the UPC CMS) – which can also be accessed directly via a dedicated dashboard on the CMS. The UPC CMS will not include mailbox functionalities. The dashboard will allow users to see all pending cases, statuses, and tasks. EPI commented that regular post may be required. In Italy, the court uses electronic versions of post services, which is not foreseen in the UPC servicing principles. Alexander Ramsay will investigate.
(There remain some questions regarding service for non-EU countries on which further clarification is being sought.)

Q: Will the CMS have the functionality of sending an email to the account holder’s email address whenever a new action is received in the CMS? For example, if a new revocation action is served into my CMS account, will the CMS send me an email notifying me of this?
A: See previous answer.

Document Formatting/Signature Requirements

Q: a) Please can we try and get some clarity as to the formatting requirements for documents to be uploaded to the CMS.
The most recent guidance that I’ve seen says (my emphasis) “Pleadings and other documents may be required to be uploaded in searchable pdf format (PDF/A)”. Does that mean that pleadings and other documents must be uploaded in searchable PDF format?
A: The UPC expects PDF/A type documents (“A” for Archive). This is to avoid formatting issues and so that the file can be viewed as intended/laid out by the filer.

Q: b) If so, must it be PDF/A, or can it be another searchable format, e.g. PDF 1.7?
I don’t see any legal basis in the RoP for the requirement that documents and pleadings must be uploaded in searchable PDF format (Rule 4.1 just says that ” Written pleadings and other documents shall be signed and lodged at the Registry or relevant subregistry in electronic form. Parties shall make use of the official forms available online.”), so it would be good to understand where the requirement for searchable PDF documents comes from and what the consequences would be if a non-searchable PDF format were used by mistake.
A: The UPC also expects the PDF/A document to be searchable (“A” for Archive). This is part of the shared approach. All documents must be readable and searchable.
EPI commented that if the requirements imply searchable documents, then the court should also share any document in a searchable document version.
Regarding the legal basis for such requirements, the UPC will investigate.

Q: Please can the UPC IT team confirm whether they really mean “in searchable pdf format (PDF/A)”.
A: See previous answer.

Q: The PDF/A format is an archival standard and such documents may or may not be text searchable but still be valid PDF/A documents. Many of the PDFs we will be producing will be from scanned images, e.g. IPReg certificates or signed Mandates, and these will not be text searchable (unless they are expecting us to OCR all such documents before we produce a PDF!).
A: See previous answer.

Q: When using the API For the opt-out process, do the supporting documents (opt-out document template/mandate) require signing with an eIDAS-compliant certificate? If so, which document format does the UPC require? (Word/PDF)
A: UPC always expects PDF versions of documents, and the eIDAS signature will not be required on the mandate or template.

Q: If PDF format is required, eIDAS is compatible with PDF Version 1.7+ or PDF/A 1-3. Does the UPC have a requirement or preference on which to use?
A: The UPC team will come back to us.

Q: Do the proprietor(s) need to sign the mandate with an eIDAS-compatible certificate?
A: No, not required.

Q: In the old secure version of the CMS it was possible to upload non signed pdfs. Will that be the case in the new version? (It would be good if there could be some check to prevent inadvertent filing of non-signed pdfs or incorrectly signed pdfs.)
A: It is a RoP requirement so the operational system will probably impose such signed documents.

Q: Related to the question above, is it possible to test now, or will a test be made available, to check whether a signed pdf document is valid in all respects (i.e., signed in a way that will definitely be accepted by the UPC and in an appropriate pdf form/version)?
A: The system should allow it and the CMS/IT team will look into this.

Q: Will the final version of the CMS prevent you uploading and submitting pdf documents if they are not in the correct format or if they have not been signed with the correct smart authentication? What is the consequence if a pdf document is not in the correct format and/or is not correctly signed?
A: If there is a requirement for the PDF to be signed it must be signed. Any checks would be performed by the judges and clerk in accordance with the underlying rules. The judge stressed that CMS and judges should not be confused, the judges are responsible for making final decisions and will make the legal assessment.

Q: Will there be updated versions of the templates when the CMS goes live (e.g. the opt out application form or the mandate) or are the versions dated 7 March 2022 the final versions?
A: No evolution planned for now, the content will not change.

There was insufficient time for answers to be given to the questions below.

Additional things to note:

• The CMS/IT team is keen to resolve practical issues and are cautious not to provide legal advice. They are aware however that some questions will fall into both camps.
• An extensive Q&A will be published. They will check to see if any of our remaining questions are covered by the existing Q&A. This should be published within the next few weeks.
• A question was asked about updates to the provider list. There are no plans to comment/post when there is an update as the CMS/IT team are consistently updating the list.
• A user guide for the CMS system is being prepared.
• Users can also practice on the CMS system for 2 weeks from the 13^th of February – https://www.unified-patent-court.org/en/news/unified-patent-court-provides-more-information-start-2nd-sunrise-practice-period-february-13

Opt Out

Q: The Opt-Out Document template has a space for the ‘Electronic address’ of the Proprietor. Is it mandatory to provide an electronic address? If an address is provided, what will this be used for?

Q: RE Opt-outs: Article 83 UPCA states that “an applicant for a European patent … applied for” “shall” have the possibility to opt-out. Rule 5.1 of the Rules of Procedure limits this by saying that only “the applicant for a published application for a European patent” can opt-out.
The current IT system then adds another limit, for which I can see no justification in the law, by requiring an “EP” publication number to be entered in the CMS when preparing an opt-out request. There is at least an arguable case that a PCT publication represents a “published application for a European patent”, especially after entry into the European phase is effective (e.g. Articles 153(3) and 153(5) EPC).
It’s been put to me that there may well be legitimate reasons why an applicant would want to opt-out as soon as possible, prior to grant. For example, commentary has suggested that Arrow declarations or similar may be available at the UPC. In the UK, the possibility of pre-grant interim injunctions have also been raised – we cannot say definitively at this point whether the UPC will allow such actions. While such actions may be rare, even if possible, they may be extremely high value. Registering an opt-out at the earliest possible moment could be a matter of some importance if even the threat of action exists.
Can the CMS be updated to allow “WO” publication numbers as well as “EP” numbers? Otherwise, there is a lacuna between what the law provides and what the IT systems allow.

Q: When filing the opt-out via the API, does this need to be done via an API key linked to an account of a person who is set up as a UPC representative?

Q: How will we be able to share opt out application information between different users in our company? Currently when lodging an application in one account, it is not viewable via the opt-out or proceeding search on another account.

Q: Kevin Mooney previously mentioned there would be “Teams” functionality to link different users together to view a CMS procedure. When looking around the portal we are unable to find it. Where is this functionality available? Will it apply to both opt-out applications and litigation cases?

Q: Will opt-out applications be “visible” on the CMS system during the sunrise period – that is, will it show in the UPC CMS if an opt-out application is already in process for an EP application/patent (by another user)? If visible, where will this be visible

Q: How will the UPC CMS manage opt-out/litigation applications/procedures (filed by one UPC Representative) should the relevant UPC Representative move to another firm (assuming the application/procedure stays with the entity that filed it (and is transferred to a different UPC Representative as the original entity)?

Q: What date will the Registry check as to whether an opt out application is made in respect of an EP application or a granted patent (so in the name of applicant or proprietor)? For example, if the publication of grant date is known at the time of the opt-out application, but the publication of grant date falls AFTER the opt-out is applied for, what information (applicant or proprietor) should be included in the application itself?

Q: We have highlighted a risk that an SPC might grant close to the date the opt out is submitted, potentially resulting in an invalid opt out. In one example, we identified that there can be a significant delay between the patent office granting an SPC and that information reaching the representative. In our example, a grant decision was received on 13 Oct 2022. The decision itself is dated 2 weeks earlier – on 29 Sep 2022. This delay could result in an SPC with an earlier grant date not being included in an application to opt-out an underlying EP. Are there any suggestions for managing the potential risk with the opt out rule/CMS which appears to require a listing of granted SPCs only and not pending SPC applications?

Q: Rule 5.3 makes no mention of “countries” in the list of information that an application for an opt out must contain, but the template for the opt out application form refers to “country abbreviation” in the details to be provided for each EP patent. What is meant to be listed here, e.g. all the countries which were designated on the day the EP granted (as possibly implied by R5.1(b)) or all the countries where the patent was validated (bearing in mind that in some countries validation is automatic on EP grant) or all the countries where the patent is currently in force?

Q: Since the template opt-out forms allows one to list multiple patents/apps, please confirm that it is possible to submit multiple opt-outs in a single action for an applicant/patentee in CMS?  This point appears relatively clear but there were comments in at least one talk I attended that suggested this is not possible.

Q: Can the person who electronically signs the opt-out be different to the person who lodges the application under their CMS account?

Q: Can a legal entity (e.g. a company) be appointed in a mandate such that a person with a company certificate can electronically sign an opt out on behalf of that company? Presumably it can because Rule 1.3 RoP states that “References to persons in these Rules may apply to legal persons as well as natural persons”.

Mandate

Q: Can a single Mandate be used to authorise more than one person (by amending the template)?

Q: Does the Mandate only have to be electronically signed by the person lodging the Mandate? i.e. can the authorised person signing on behalf of the proprietor use a ‘wet-ink’ signature?

Q: Can a mandate authorise multiple individuals and, if so, must they all be listed by name (the template refers to a single person being authorised) or could it refer to “all members of EPO Association No. XYZ” or similar?

Q: Can a general mandate be used to appoint a person for all the applications and patents held by an applicant/patentee? Including future cases not yet filed? If not, what is the legal basis?

Other

Q: What steps have been taken to ensure that the CMS system will be able to cope with the high demand expected in March 2023?

Q: Please ask if there is going to be any further beta-testing period for the API before 1 March 2023.

Q: (Appears to be a duplication of the question above) Will you be having a new trial period (beta test?) before the sunrise period opens? If not, please reconsider.

Q: What is the difference between CMS https://cms.unified-patent-court.org/login and CERUS https://cerus.unified-patent-court.org/login