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Decisions for granted European Patents

For granted European Patents in force when the Unified Patent Court Agreement (UPCA) comes into force, it is necessary to decide whether or not to  “opt out” of the jurisdiction of the UPC. An opt out will last the entire lifetime of the patent, but it will only be possible to opt out of the UPC during an initial 7 year transition period.

The UPC will automatically share jurisdiction with national courts over national validations of European Patents (even those granted before the UPC becomes operational) unless you actively “opt out”. It will be possible to register opt outs before the UPCA comes into force, during the so-called “sunrise period”.

As shown in the example below, if no such “opt out” is filed, the UPC will share jurisdiction with the national courts in the countries in which the UPCA takes effect. However, this does not apply to all EPC countries. For example Spain (ES) is not participating in the UPC and the United Kingdom (GB), for example, is one of a number of EPC countries which are not member countries of the EU. As a result, jurisdiction for Spain and the United Kingdom and other non-participating countries remains solely with their national courts (no shading).

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If an opt out is filed, jurisdiction for all of the validated countries remains solely with the national courts (see below).

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Filing an opt out does not preclude withdrawing the opt out (effectively opting back in to the jurisdiction of the UPC), for example to start a European-wide action for infringement. However, if an action has started at the UPC (for example a central revocation action), it is not possible to file a belated opt out to transfer the action into a national court. Further, once an infringement action has commenced at a national court, it is not possible to bring an action at the UPC for the same infringement, irrespective of whether the case is opted out or not.

Generally speaking, filing an opt out appears to give patentees most flexibility whilst minimising risk. If an opt out is filed, there is always the possibility of opting back into the jurisdiction of the UPC before the patent is enforced in Europe (assuming there has been no national litigation). However, in the meantime, for an opted out patent, there is no threat of a central revocation action being initiated at the UPC.

A disadvantage to opting out is the procedural burden, and likely cost, of filing the opt out, particularly for patentees with a large number of European patents. It will be necessary to identify the patentee entitled to file the opt out, and arrange for the opt out to be filed. A competitor may be able to prevent a patent from being opted back in by starting national proceedings, thereby preventing an action from being brought at the UPC.

There are, of course, very good reasons for using the UPC in preference to national courts. Patentees who are confident that they will want to use the UPC to the fullest extent possible may therefore decide that the administrative burden of filing opt outs on their patent estate is not merited. Similarly, if the circumstances are such that the patent is unlikely to be ever litigated, there may be little point in filing an opt out.

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