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Opting out of the Unified Patent Court

The Unified Patent Court (UPC) is due to open on 1st June 2023.

During a transition period (currently seven years), disputes relating to traditionally validated European patents my be litigated in either the UPC or the national courts of the Member States that have contracted to the UPC Agreement.

Currently 17 countries have ratified the UPC agreement:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden.

European patents which have been validated in these member states may therefore be subject to litigation in the UPC, unless they opt-out during the transitional period.

An ‘opt-out’ is therefore a declaration filed by the patent proprietor, or on their behalf, stating that they do no want their traditional European Patent (that is the bundle of national patent rights validated from a granted European Patent) to be under the jurisdiction of the UPC. An opt-out cannot be filed if any UPC proceedings are already pending, and can only be filed during the initial seven year transition period.

A European Patent which has been ‘opted-out’ remains under the jurisdiction of the national courts where the patent has been validated.

An ‘opt-out’ can last for the whole term of the European Patent, but can also be withdrawn at any point by the patent proprietor, provided that no national court proceedings are to WordPress. This is your first post. Edit or delete it, then start writing!

Why might you want to opt-out?

• Opting-out preserves the status quo, whilst also allowing the option to withdraw the opt-out at some point in the future.
• European patents which are not opted-out remain vulnerable to a central invalidity action in a single court, which could result in revocation of the European Patent in all UPC states.
• Patent owners may feel some uncertainty in relation to the new UPC forum which is not yet tried and tested.
• Costs may be higher at the UPC when compared to costs of litigation in a single national court.

Why might you not want to opt-out?

• You may wish to enforce your European Patent in multiple jurisdictions which are covered by the UPC and therefore may wish to stay within the jurisdiction of the UPC.
• You may not expect your patent to be challenged and would rather avoid the administration involved with opting-out.

Identifying the true owner of the patent

If the European Patent is owned by multiple parties then all owners will need to consent to an opt-out request. It is important to identify the true owner of the patent or patent application

An application to opt out of the jurisdiction of the UPC must be filed by, or on behalf of the true owner of the patent or patent application. The true owner is the person entitled to be registered as the proprietor, whether or not they are named as such on the patent registers.

Therefore before filing an opt out application we need to determine the true owners for each designated state of a European patent or patent application.

In most cases the true owner will be named on the published patent, however where transfers or changes of name have taken place this will need consideration.

If you are considering opting out your patent or patent portfolio from the jurisdiction of the UPC then please get in contact with us without delay so that we can investigate any changes of ownership.

Opt-outs can be registered in advance of the commencement of the UPC, during a three month ‘sunrise’ period which began on 1st March 2023. Doing this ensures that European patents are opted-out before the start of the UPC and guards against any risk of proceedings being brought centrally before the UPC soon after the court opens.

Patents for which unitary effect is requested, also known as Unitary Patents, cannot be opted-out and will fall under the exclusive jurisdiction of the UPC.

Hargreaves Elsworth will be able to assist with registration of opt-outs on your behalf. There is no official fee, but some administrative charges will apply. Please get in touch so we can discuss your particular portfolio.

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