UPC and Opt-Out
Jurisdiction of the UPC
According to Art. 3 of the Agreement on a Unified Patent Court (UPC-A) the future UPC will have jurisdiction not only over European patents with unitary effect, but also over traditional European patents (‘validated’ patents) and pending applications, and over SPCs, even if these are granted before its entry into force.
During a ‘transitional‘ period however, the national Courts will remain competent to hear cases relating to validated European patents.
Opting-out is the option open to patentees and applicants to exclude disputes related to any of their validated European patents (in force or expired) or pending applications from the UPC’s jurisdiction. Any action for infringement or for revocation of an Opted-out European patent may only be heard by the competent national Courts, as is currently the case.
An opt-out has effect in all Member States and for the entire lifetime of the patent.
The UPC Preparatory Committee has decided that there will be no official fee for filing a request for an opt-out. There will however be costs associated with the handling of the opt-out procedure through your patent attorney firm.
For the avoidance of doubt, European patents with unitary effect cannot be opted out.
When to opt out
The registration of opt-outs will only be possible during the limited ‘transitional’ period (7 years, prolongable by 7 years). Practically, opt-out’s can be notified to the UPC Registry by the latest one month before expiry of the transitional period .
It should be noted that opting out will be possible during a ‘sunrise’ period spanning the three months preceding the opening of the UPC. The sunrise period is expected to start on 01.01.2023.
Important note: An Application to opt out a given patent cannot be registered if an action relating to said patent has already been brought before the UPC .
How to opt out
An application to opt out must be lodged with the UPC Registry.
Opt-outs are to be registered on a right per right basis and in the name of each and all proprietors or applicants.
The registers need not be updated, but in case of discrepancy a declaration must be filed alongside, stating that the requesters are entitled to be registered in the national patent registers.
The Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application.
The opt-out is only effective from the date of entry into the Register.
Withdrawal of the opt-out
An opt-out can be withdrawn at any moment, provided no action has been brought before a national Court .
This opt-in will then be definitive: the patent proprietor will not be able to opt out its European patent again .
If an opt-out application was registered for a pending European patent application, said opt-out will be automatically deemed withdrawn should the patentee decides to request unitary effect (obtain a unitary patent).
Philippe OCVIRK, Partner | European patent attorney