Yes, withdrawing the opt-out is possible. This is also referred to as opting-in. However, once your patent is opted-in after an opt-out, it is impossible to opt out again.
No. An opt-out can only be made in respect of all UPC countries for which the European patent has been granted or which have been designated in the application.
The courts will apply national law. However, national laws can be amended in view of harmonization with the UPC Agreement. In Germany and France, new rules on double patenting have come into force, allowing double patent protection for a national patent for the same invention alongside a unitary patent or a traditional European patent as long as the latter is not opted-out. This does not appear to open important new avenues, but goes to show that systems will exist side by side, with strong emphasis on harmonization. In Belgium, the limitations on the rights of patentees such as the research exemption and breeders’ exemption are brought in line with the UPC, so as to avoid different judicial regimes between patents that are opted-out or opted-in.
Although it is clear that the UPC and national courts have markedly different procedural rules particularly relevant to the speed of the proceedings, and that their decisions have different territorial scopes, there is less certainty about the applicable law when opting out. Moreover, there are various views among experts on whether an opt-out from the UPC’s competence also means an opt-out from the entire UPCA law.
The UPC has exclusive jurisdictional authority in respect of all suits on infringement or validity of unitary patents as well as all nationally validated European patents and SPCs in states that have ratified the UPCA. However, during a transitional period of 7 years from 1 June 2023, an action for infringement or revocation/invalidity of a European patent or SPC may still be brought before a national court (Art. 83 UPCA). During the transitional period, both courts therefore share competence, meaning that parties have a choice of forum and may have their case heard and determined before either of these courts. It is also during this transitional period that proprietors of a European patent or SPC may opt out from the exclusive competence of the UPC; an opt-out can be filed until 1May 2030. In that case, the national courts have exclusive competence. Hence, during the transitional period, patent proprietors will have the choice of whether to sue an infringer in a national court or before the UPC. Conversely, a third party may initiate revocation proceedings for the patent before the UPC and a national court.
In order to opt-out your European patent from the jurisdiction of the UPC, you must file an opt-out request with the UPC. The opt-out request can only be made on behalf of all proprietors. Your UPC representative may file such a request for you. In that case, only national courts have jurisdiction.
The requests for opting out have to be made for each European patent individually. So you can choose to have some of your European patent rights opted-out from the UPC and others falling under UPC jurisdiction.
The possibility for filing an opt-out also exists for pending European patent applications, from the time of publication of the application by the European Patent Office.
For new patent applications (applications still in their priority year or applications that have yet to be filed) you could consider filing national applications in the European countries of interest instead of filing a European patent application. Whether this is interesting from a cost perspective or a legal perspective, will depend on the situation.
Opting-out is removing a European patent from the jurisdiction of the UPC. It means that the current system whereby only national courts have jurisdiction is maintained and that the UPC has no competence to hear cases on the opted-out European patent. If you decide that legal disputes on infringement and validity of your European patent(s) should be heard by national courts instead of the UPC, you must submit an opt-out request for your current European patent(s). Opting-out a unitary patent is not possible.
No. The validity of a patent cannot be contested in a suit for infringement brought by the holder of a license at the UPC if the patent proprietor does not take part in the proceedings. The defendant in such proceedings for infringement wanting to contest the validity of a patent shall have to bring actions against the actual patent proprietor before the UPC.
No. Only the holder of an exclusive license is entitled to bring actions before the UPC, provided that the patent proprietor is given prior notice and unless the licensing agreement provides otherwise.
The holder of a non-exclusive license is not entitled to bring actions before the UPC unless expressly permitted by the license agreement and the patent proprietor is given prior notice.
The patent proprietor, the exclusive licensee (unless the licensing agreement provides otherwise and after giving prior notice to the patent proprietor), and the non-exclusive licensee (in so far as expressly permitted by the license agreement and after prior notice to the patent proprietor) are entitled to bring actions before the UPC.
An opt-out can be filed both before and after the grant of a European patent. This can be done until 1 May 2030. This period can be extended by member states.