FAQs and Guides

UPC opt-out FAQs

This guide was last updated 06 June 2024.

What is the opt-out?

The opt-out is a means by which a patent owner can remove European patent applications, European patents and associated SPC(s) in the participating member states from the jurisdiction of the Unified Patent Court (UPC). The default position is that all European patent applications, European patents and associated supplementary protection certificates (SPCs) in the participating member states are subject to the jurisdiction of the UPC unless an opt-out is filed. The opt-out ensures that the litigation options remain the same, that is, via the national courts.

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.

Who are the participating member states?

The participating member states are the EU member states have signed the Agreement on a Unified Patent Court (UPCA). These are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania (with effect from 01 September 2024), Slovenia, and Sweden. The six EU member states which have not yet ratified are: Cyprus, Czech Republic, Greece, Hungary, Ireland, and Slovakia.

What happens if I don’t file an opt-out?

If no opt-out is filed, the UPC shares jurisdiction of the European patent and any associated SPC(s) in the participating member states 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 is available until the end of the “transitional period”, provided that there has not been/is UPC litigation when the opt-out is filed. For example, the UPC held in CUP&CINO v Aplina Coffee Systems (UPC_CFI_182/2023) that an application for a preliminary injunction in the UPC meant that a subsequently filed opt-out was invalid.

The UPC came into operation on 01 June 2023. The transitional period will expire at least seven years from the 01 June 2023. It may be extended by a further seven years. The transitional period is therefore expected to expire on 01 June 2030 or at the latest on 01 June 2037.

Opt-out timeline

Opt out timeline june 2023

How long will the opt-out be effective?

Assuming the opt-out is validly filed and not subsequently withdrawn, it will be effective for the lifetime of the European patent/patent application.

An exception to this is if a request for unitary effect is filed within one month of grant of an opted-out European patent application. The request for unitary effect effectively over-rules the opt-out. As noted, unitary patents cannot be opted-out, they are always subject to the jurisdiction of the UPC.

Can I change my mind about the opt-out?

Yes. If you file an opt-out and later change your mind, then you should be able to 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. For example, in AIM Sport Vision v Supponor (UPC_CFI_214/2023), it was held that an opt-out could not be withdrawn because an action had been launched in the German national court(s). This case is currently under appeal.

How can I request the opt-out?

Opt-out requests are submitted to the UPC Registry online via the UPC case management system (CMS). There is no official fee.

Only the “true” proprietor(s) or applicant(s) is entitled to opt-out. All proprietors/applicants and any SPC owner(s) must also be listed on the opt-out request. Failure to list all relevant parties will invalidate the opt-out.

The UPC representative submitting the opt-out request is therefore required to complete a declaration setting out the name and address of the “true” proprietor(s) or applicant(s) and any SPC owner(s) for each designated state, and stating that they are entitled to act on behalf of the “true” proprietor(s)/applicant(s)/ SPC owner(s). The “true” proprietor(s)/applicant(s)/SPC owner(s) may not be the owner(s) registered before the EPO or national patent office(s) meaning that the preparation of a valid declaration is key for the validity of any opt-out.

An opt-out can be challenged as part of 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 are not 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. All co-owners must also be named on the opt-out request; omitting one or more co-owner will invalidate the opt-out meaning that the patent can be challenged in the UPC.

A 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 across the participating member states. For this reason alone, many patent owners have and are expected to continue to opt out the majority, if not their entire portfolio. Should central action in the UPC be desired in future, the opt-out could then be withdrawn and suitable action taken, provided that there has not been/is not any national litigation.

Of course one of the risks of opting out is that a third party could initiate national litigation and lock patents out that may have been suited to UPC enforcement. As noted, once national litigation has been started, it is not possible to withdraw the opt-out. Opting out will also mean that there is limited opportunity for UPC case law to be influenced.

Another factor to consider is the shared jurisdiction of the UPC and national courts in the participating member states for non opted-out European 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 or the national courts.

One option to consider is the use of divisional applications and/or related cases to balance the advantages and disadvantages of the UPC. Another option is to have co-existing national and European patents (provided double patenting provisions are complied with).

Is it possible to tell if a case has been opted out?

All opt out requests are recorded on the UPC Register which is available on the UPC website. The UPC Register is updated once the opt out application has been completed. It is possible to set up an alert to be notified if a particular case or a case in the name of a particular applicant or proprietor is opted out. The EPO also displays opt-out information on the European Patent Register.

What about the UK?

The UK withdrew its ratification of the UPC Agreement and its involvement in the UPC and UP. This means that nothing changes for European 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 are, however, able to represent clients in the UPC, file opt-out applications and provide advice on the UPC and unitary patents.