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Is opt-out wise?

Opt Out

The new Unified Patent Court (UPC) is also used for normal European patents. A so-called opt-out regulation can exclude the associated risk of the patent being invalidated in all associated countries in one fell swoop. But is this the right thing to do? Three patent attorneys from V.O. answer this question.

Universities and knowledge institutes
Universities and knowledge institutes should preferably sell or license out their inventions, be it to commercial market partners or start-ups originating from themselves. They will want to be affected by legal patent procedures as little as possible. An opt-out is advisable if only to keep all options open. If necessary, the licensee can subsequently be given the opportunity via an opt-in, at least in the case of an exclusive licence, to start a case before the UPC. Licence contracts, including those that are already existing, must be checked in this regard and possibly amended.

Bart van Wezenbeek 
European Patent Attorney


From a purely cost-based perspective, it’s not advantageous to opt out, because separate infringement proceedings and nullity proceedings in different European countries mean that the costs increase significantly. And that’s especially important for SMEs. The case law has, on the other hand, not yet been established and the quality of the UPC is unknown. With a single judgment, the patent can be lost in all associated countries. If a patent is strong, the risk is low. For core patents and weak patents, it can make sense to opt out of the UPC, regardless of whether the patent holder is an SME or a multinational. It’s best to look at every case individually before deciding.

Bettina Hermann
European Patent Attorney


For multinationals, it’s crucial that the most important patents are maintained. If they don’t opt out, there’s the risk that a bundle of national patents will be voided via a single judicial process in one fell swoop. Since the case law of the new UPC still needs to be developed, it’s safer to choose the various national regional courts. If a third party wishes to void the bundle of national patents, it will have to initiate nullity proceedings in the national courts in all of the relevant countries. This is certainly a difficult decision in terms of cost. Therefore, it’s advisable to make use of the opt-out regulation for European patents.

Herman Witmans
European Patent Attorney

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