UPC opt-out FAQs
This guide was last updated 10 October 2022.
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What is the opt-out?
The opt-out is a means by which a patent owner can remove European patents and European patent applications from the jurisdiction of the Unified Patent Court (UPC) when it comes into effect. The default position is that all European patent applications and European patents will be subject to the jurisdiction of the UPC when it comes into effect, unless an opt-out is filed. The opt-out ensures that the litigation options remain the same.
The opt-out is related to the UPC. It is not relevant for unitary patents. Unitary patents (UPs) are always subject to the jurisdiction of the UPC and cannot be opted out.
What happens if I don’t file an opt-out?
The UPC will share jurisdiction of a “non opted-out” European patent and any associated SPC(s) with the national courts. In practice this means that enforcement or third party actions can take place in the UPC or one or more national courts.
When can an opt-out be filed?
The opt-out will be available from the beginning of the “sunrise period” to the end of the “transitional period”, provided that there is no ongoing UPC litigation when the opt-out is filed. The “sunrise period” will be triggered by Germany ratifying the UPC Agreement.
The sunrise period does not yet have a definite start date but the latest announcement from the UPC Preparatory Committee is that it will begin on 01 January 2023 with the UPC then coming into operation on 01 April 2023.
The transitional period will expire at least seven years after the UPC comes into effect. It may be extended by a further seven years. Continuing the above timings, the transitional period is therefore expected to expire on 01 April 2030 or at the latest on 01 April 2037.
Opt-out timeline with example dates
How long will the opt-out be effective?
It is understood that the opt-out, once registered by the UPC Registry, will be effective for the lifetime of the European patent/patent application. An exception to this will be if the patent owner subsequently withdraws the opt-out or if a request for unitary effect is filed within one month of grant of an opted-out European patent application. As noted above, unitary patents cannot be opted-out, they are always subject to the jurisdiction of the UPC.
Can change my mind about the opt-out?
Yes – if you file an opt-out and later change your mind, then you can withdraw the opt-out in order to restore the shared jurisdiction of the UPC and national courts. This option is, however, only available once. Withdrawal of the opt-out is permanent, it is not possible to file a second opt-out. A withdrawal is also not available if an action has been launched in the national courts.
How can I request the opt-out?
Opt-out applications will be submitted to the UPC Registry via an online case management system. There will be no official fee.
Only the “true” proprietor(s) or applicant(s) is entitled to opt-out and the European representative submitting the opt-out application will be required to complete a declaration setting out the name and address of the “true” proprietor(s) or applicant(s) for each designated state and stating that they are entitled to act on behalf of the “true” proprietor(s)/applicant(s). The “true” proprietor(s)/applicant(s) may not be the owner(s) registered before the EPO or national patent office(s) meaning that the preparation of a valid declaration will be key for the validity of any opt-out.
An opt-out can be challenged by an action filed at the UPC and if invalid, the patent will be subject to the jurisdiction of the UPC. An opt-out can be corrected but any correction will only be effective from the date the correction is accepted by the UPC Registry. It does not have retroactive effect.
In view of this, it is advisable to carefully review the ownership of European patent(s)/application(s) to be opted-out, including all designated states.
Can co-owners, licensees or SPC owners request the opt-out?
Licensees will not be able to request an opt-out. If you are a licensee, exclusive or otherwise, and have a preference for the opt-out, this should be discussed with the patent owner. Licence agreements should also be reviewed for handling of the opt-out.
Co-owners must opt-out in agreement. It is not possible to divide a bundle of national rights from a granted European patent if they are owned by different entities, for example, opting out certain members of the bundle.
An supplementary protection certificate (SPC) must “follow” the EP patent on which it is based. This means that if the European patent is opted out, the SPC must also be opted out. If the SPC and patent are owned by different entities, then all owners must opt out in agreement. The opt-out request must be filed setting out the name and address of the SPC owner.
Why should I consider the opt-out?
There are, unsurprisingly, many advantages and disadvantages to the new system and the opt-out decision is likely to need a case-by-case analysis balancing a range of factors.
One of the key factors is the risk of central revocation in an untested environment, i.e. the UPC. For this reason alone, many patent owners are expected to opt out their entire portfolio – at least in the initial few years of the system coming into effect. Should central action in the UPC be desired in future, the opt-out could then be withdrawn and suitable action taken, provided that there is no ongoing national litigation. However, the risk of opting everything out is that competitors could initiate national litigation and “lock” patents out that may have been suited to UPC enforcement. Opting everything out will also mean that there is limited opportunity for UPC case law to be influenced.
Another factor to consider is the shared jurisdiction between the UPC and national courts for non opted-out EP patents. This shared jurisdiction allows the proprietor to choose where to bring an action; assuming of course that proceedings have not already been started in the UPC.
One option to consider is the use of divisional applications and/or related cases to balance the advantages and disadvantages of the new system. Another option is to have co-existing national and European patents (provided double patenting provisions are complied with).
What about the UK?
The UK has withdrawn its ratification of the UPC Agreement and its involvement in the UPC and UP. This means that nothing changes for EP patents validated in the UK (the UK part of the European patent “bundle”). The UK courts continue to have jurisdiction for any enforcement or third party action. UK-based European patent attorneys will, however, be able to represent clients in the UPC, file opt-out applications and provide advice on the new system.