Decisions for existing granted European Patents

Preparations are underway for the opening of the new Unified Patent Court (UPC) on 1 June 2023. The court will allow patentees and third parties to seek relief covering all States that are participating in the UPC with a single court action. This enables a third party to clear the way for sale of a product in multiple European countries via a single court action with very short deadlines. In contrast, once the EPO opposition period has expired, such a result can only be achieved through national court procedures by litigating separately in the courts of each individual country concerned.

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. Unless opted out, existing nationally validated European patents in the participating UPC countries will be under the jurisdiction of the new court and will be at risk of a central revocation at the UPC. An opt out lasts the entire lifetime of the patent, but it is only possible to opt out of the UPC during an initial 7 year transition period.

The UPC automatically shares jurisdiction with national courts over national validations of European Patents (even those granted before operation of the UPC) unless the patent is actively “opted out”. It is possible to register opt outs before the UPCA comes into force, during the so-called “sunrise period” beginning 1 March 2023.

An opt out is only effective once it has been entered by the UPC in the register. Therefore we recommend filing an opt out request early within the sunrise period; the 1 June 2023 date for the opening of the UPC should not be regarded as the deadline for filing the opt out. Additionally, depending on circumstances, there may be considerable work involved in ensuring the data used for opting out is accurate.