3 April 2023

Opting-Out from the Unified Patent Court

Focus on Opt-outs

Why opt-out?

With the advent of the UPC and Unitary Patent (UP), one of the first choices that will need to be made by those engaged in the European patent system is whether to opt-out their existing portfolios of patents and patent applications. This is because, absent action by the patent proprietor, the UPC will apply to existing European patents in the participating countries as well as UPs obtained in the future.

The effect of an opt-out will be to ensure that any litigation relating to those rights can only be initiated in the national courts, so preserving the existing position. If a patent is not opted-out by the time that the UPC system starts to operate, litigation may be commenced either in the appropriate national court or before the UPC, at the choice of the party initiating the litigation.

This means that a key decision that patent proprietors will need to make before the system even starts is whether to opt-out their existing European patents and patent applications from the jurisdiction of the UPC. Opt-outs will be possible in the sunrise period that began on 1 March 2023.

An important consideration in deciding whether to opt-out is the risk that a competitor could look to revoke existing European patent rights at the UPC. If avoiding this risk is important to you, you should consider opting-out.

If you opt-out your patent or patent application, you can decide later to withdraw that opt-out to take advantage of the UPC if you so choose, as long as litigation has not been initiated before the national courts in the meantime. You cannot opt-out again after withdrawing a previous opt-out, however.

How to opt-out?

In terms of the practicalities, an opt-out can only be registered on behalf of, and with the authority of, all of the actual owners of the patent or published application, who may differ from the registered owners if changes have not been recorded. The opt-out procedure requires a declaration that the patent owners listed in the opt-out application are entitled to be registered as such.

You should therefore ensure that ownership of any patents or patent applications to be opted out is clear, and that, where an opt-out is required, the owner, or joint owners of the patent or application, is/are in a position to authorise us to register the opt-out.

If you choose to go ahead, we will provide the necessary documentation to allow the owner(s) to confirm their ownership and authorise us to act in the matter. In order to execute the document, a list of the patents or patent applications to be opted-out will need to be completed. While our records may include some of this data, responsibility for completeness and accuracy of the data will lie with the owner(s), who have visibility of any transactions relating to the portfolio that they may have entered into.

Once the necessary documentation has been executed, we will record the opt-out with the UPC registry and report with confirmation that the opt-out has been lodged. The opt-out will be effective from the day it is recorded on the register, assuming that the details provided are accurate.