Unified Patent Court (UPC): Opt-Out Strategy for Granted European Patents and European Patent Applications

The Unified Patent Court (UPC) is a central European court, which has become competent for granted European patents and European patent applications.

For a transitional period of 7 to 14 years, the granted European patents will remain within the jurisdiction of national courts (in Germany: the regional courts for infringement proceedings and the Federal Patent Court for nullity proceedings), if an opt-out request is filed with the UPC. In the absence of an opt-out request, the unitary patent court will be competent.

Requirements of the opt-out request:

The opt-out request is subject to the following conditions:

  • The opt-out request can only be filed for active European patents, for active European patent applications and for European patents which have expired.
  • The opt-out request can only be filed as long as no infringement proceedings or nullity action has been brought before the UPC.
  • The opt-out request can only be filed electronically by the patent owner or his authorized representative using the secure communication platform of the UPC. The UPC will not loose competence before the request has been entered into the patent register.
  • The opt-out request can only be filed once. If the request is withdrawn, the patent will remain permanently in the competence of the UPC.

Advantages/Disadvantages of an Opt-Out Request:

Owners of European patents should weigh the following advantages and disadvantages against each other before filing an opt-out request:

Benefits of an Opt-Out Request

  • Due to the sole competency of a centralized court in the EU, there is a risk of losing patent protection in all participating EU validation countries in one decision, if the UPC determines that the European patent is null and void. For a European bundle patent, on the other hand, national courts in all validation countries have to decide individually.
  • There is so far no established case law or established procedural rules for the Unified Patent Court. Hence, all proceedings before the UPC are subject to a high degree of uncertainty.
  • Because the opt-out request can be withdrawn, there are more options available, if there are concerns that infringement proceedings are imminent. If an opt-out request has already been withdrawn, the scope of options is reduced accordingly.

Disadvantages of an Opt-Out Request

  • Through a centralized procedure at the UPC, a uniform decision may be obtained for all participating validation countries, so that parallel procedures before national patent courts and thus procedural costs can be avoided.
  • In case of a shared patent ownership, the consent of all patent owners must be obtained prior to filing an opt-our request.
  • If license agreements have been concluded for the European patent, an agreement must be reached with the licensees.

Our Opinion:

The owners of European patents and European patent applications should consider making use of the opt-out request while this option is still available. The above advantages and disadvantages should be weighed against each other before making a desicion.

For unitary patents, on the other hand, no opt-out request can be filed.

Foto: © MPD01605, [CC BY-SA 2.0]

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