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The opt out may be filed at any time during the patent's lifetime, but only during the transitional period until 1 May 2030. Should you consider an opt-out, it is important to note that an opt-out is no longer possible if an action has been filed by a third party in respect of your European patent before the UPC. Likewise, withdrawing an opt-out (to get back in with the UPC) is no longer possible if an action has been filed before a national court concerning an opted out EP patent. Therefore, should a competitor file an invalidity action with the UPC on the first day of operation of the new court, you will no longer be able to opt out.
No. If an action has been started before a national court in respect of a patent or application before the registration of a withdrawal of the opt-out, the withdrawal is ineffective in respect of that patent or application, irrespective of whether the action is pending or has been concluded. Hence, opting in is no longer possible.
Yes. But when filing the request for opt-out, a declaration of proprietorship must be produced in such a case, indicating that the person filing the opt-out is the proprietor or applicant or is entitled to be registered as proprietor or applicant under the law of each Contracting Member State, and is therefore entitled to file the opt-out.
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.