Opt outs FAQs
What is opting out of the UPC?
The Unified Patent Court (UPC) will be a new court system that will have jurisdiction over national validations of granted European Patents in the participating countries. In the initial seven year transitional period, jurisdiction of such patents will be shared with the national courts. During this period, patent proprietors have the option of opting their patents out of the UPC’s jurisdiction, so that the national validations can be litigated only in the national courts.
How do I opt out of the UPC?
Opting out merely requires filing a request to the UPC, assuming no litigation has started in the UPC already. There is no official fee payable. The request can be made by the a patent attorney on behalf of the applicant(s) or proprietor(s) of the European Patent (i.e. all the national validations in the participating countries) or European application. An opt out request must be authorised by all of the applicant(s)/proprietor(s).
When can I opt out of the UPC?
In the three months preceding the opening of the UPC, there will be a sunrise period in which applicants and proprietors can opt out before the start of the UPC. Then, during an initial 7 year transitional period, it will be possible to opt out at any time after publication of a European Patent application or after grant of a European Patent application, unless litigation in relation to the patent (any national validation) has already been brought before the UPC. It will not be possible to opt out after the end of the transitional period.
Can I opt out a pending patent application as well as a granted European patent?
Published pending European applications can be opted out of the jurisdiction UPC in addition to granted European patents. The opt out will remain effective for the lifetime of the European patent, including after grant and national validation.
If I opt out a pending European patent application, can I later obtain a UP?
Opting out a European patent application will not prevent you obtaining a UP after grant. However, if a UP is obtained then the opt out will no longer be effective for the entirety of the European patent, including for any additional national validations.
Can I opt out national validations obtained in addition to a UP?
It is not possible to opt out national validations obtained in addition to a UP. An opt out can only made in respect of an entire European patent and it is not possible to opt out a European patent for which a UP has been obtained. At least initially, those national validations will not be under the jurisdiction of the UPC. However, as additional states join the UPC, some national validations may be brought under the jurisdiction of the UPC.
Why would I want to opt out of the UPC?
Under the jurisdiction of the UPC, there is a threat of central revocation. Generally speaking, absent other considerations, filing an opt out appears to give patentees most flexibility whilst minimising risk. There is the possibility of opting back into the jurisdiction of the UPC for enforcement, but in the meantime for an opted out patent there is no threat of a central revocation action being initiated at the UPC.
Can I change my mind about opting in or out of the UPC?
If you opt out, you can withdraw the opt out at any time assuming no litigation has started in the national courts already. However, once an opt out has been withdrawn it will not be possible to opt out again.
Why would I not want to opt out of the UPC?
Many people are taking the view that there is little disadvantage to initially opting out their entire patent portfolio, on the basis that they could still opt back in later, for example to bring an infringement action at the UPC. However, reasons for not opting out at all include the possibility of a subsequent national action blocking use of the UPC, administrative and cost burden of opt outs and perhaps an interest in developing the case law of the UPC.
Will opting out of the UPC change the renewal fee cost?
Renewal fee costs are unaffected by whether you choose to opt out or not. The level of renewal fees is solely determined by which countries you validate your European patent in and whether or not you obtain a UP.
What information is needed to make an opt out?
An opt out requires identification of the European Patent or application, the names of the true proprietors for all states and authorisation from all proprietors. If there are supplementary protection certificates (SPCs) based on the European patent to be opted out, further information will be required. A true proprietor is a party entitled to be recorded as an owner on the national registers for the European patent, which is not necessarily the party actually recorded as proprietor. All states means all countries designated by a European patent, which are also listed on the front page of the granted European patent. No specific documentation is required to evidence authorisation, but this must be declared on the opt out request. If the opt out is filed by a UPC representative, then no mandate or power of attorney is required.
Can I opt out an SPC?
An opt out will be effective for supplementary protection certificates (SPCs) based on a European patent. However, additional information identifying the SPC number, country and SPC holder is required.
Can I opt out all my European patents at once?
There is no mechanism for opting out multiple patents with a single opt out. Therefore, opt outs must be filed on an individual basis. However, we have developed a software tool that interfaces with the UPC system and will enable us to carry out bulk opt outs, making it possible to opt out large numbers of patents efficiently.