Boult Wade Tennant
UPC » The UPC – Should I opt out my patent or not?

The new Unified Patent Court (UPC) is expected to open its doors in late 2022 or early 2023. The UPC will be the only court with competence for the new Unitary Patent. However, for European Patents it will, at least initially, be possible to opt out from the jurisdiction of the UPC.

Frequently Asked Questions on Opt outs

What is an opt out?
An opt out is a declaration that is filed by or on behalf of a patent owner stating that they do not want their European Patent (i.e. the “bundle” of national patents validated from a European Patent) to be under the jurisdiction of the UPC.

What are the effects of opting out my patent?
An opted out European Patent will remain under the jurisdiction of each competent national court where it has been validated. The UPC will have no jurisdiction. Therefore, once opted out, invalidity and infringement proceedings relating to the European Patent can only be brought in the national courts (unless the opt out is withdrawn).

How long does an opt out last?
The opt out will last for the whole life of the European Patent, unless the opt out is withdrawn by the patent owner.

Why would I want to opt out?
If you do not want the UPC to have jurisdiction over your European Patent then you will need to file an opt out request.

For patent owners, reasons for wanting to opt out might include:

  • Not wanting your European Patents to be vulnerable to a central invalidity action in a single court that could result in revocation of the European Patent in all states of the UPC.
  • Uncertainty regarding the new UPC forum – it will use new patent judges and there will be an initial lack of substantive and procedural case law, resulting in greater uncertainty in predicting costs, timescales and outcomes of litigation.
  • The probability that litigation costs in the UPC will be higher than the equivalent costs of litigating in a single national court.

Are there advantages to not opting out?
If you are a patent owner wishing to enforce your European Patent in multiple jurisdictions covered by the UPC, then staying within the jurisdiction of the UPC may well be advantageous. Equally, if your European Patent is unlikely to be challenged, then the reasons for opting out are significantly reduced.

How do I opt out my patent?
The UPC will be providing a Case Management System to allow opt-outs to be recorded online. The opt out can be made by the patent owner(s), a UPC representative, or another person duly authorised by the patent owner(s). Boult Wade Tennant will be able to assist you by managing and recording opt outs on your behalf.

Where a European Patent is owned by multiple parties, all of the patent owners will need to consent to the opt out.

Is opting-out my patent a permanent decision?
No. A patent owner can withdraw their opt-out at any moment as long as proceedings relating to the European Patent have not been started in any national court in the meantime. This point needs to be remembered by patent owners who may be minded to adopt a strategy of initially opting out their European Patents and only seeking to withdraw the opt out when it is time to litigate.

What are the costs of opting out?
There is no official fee for opting out but the process will require patent owners to carry out some administrative checks so there will be some administrative overhead involved. If you would like assistance opting out your European Patents, please contact Boult Wade Tennant to discuss our charges.

Can I opt out a Unitary Patent?
No. Only nationally-validated European Patents can be opted out of the UPC. Unitary Patents will fall under the exclusive jurisdiction of the UPC by definition.

I’ve heard of a ‘sunrise’ period for the UPC. What is this?
The UPC will be providing a 3-month ‘sunrise’ period before the UPC opens. The sunrise period will be the earliest opportunity to file an opt-out and will ensure that an opt out is registered before the UPC starts receiving cases.

If I decide to opt-out my patent, when should I do this?
It is expected that many patent owners will want to opt out during the initial 3-month ‘sunrise’ period. This will ensure that their European Patents are opted out before the UPC starts. In this way it guards against the risk that a central revocation action is started in the UPC soon after the court opens (since once any proceedings have been commenced in the UPC relating to a European Patent it will not be possible to opt out that patent from the jurisdiction of the UPC).

However, if the sunrise period has finished, and assuming that no UPC proceedings have started, it will still be possible to opt out a European Patent during an initial transition period of 7 years.

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