Deciding Whether To Opt Out of the Unified Patent Court

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By: Francesca Giovannini


Although the precise timing is still unknown, one possible timetable would have Europe’s Unified Patent Court (UPC) begin operations by mid-2017. If the UPC Agreement indeed enters into force within that period, then the so-called “provisional period” could start between the end of 2016 and early 2017. The provisional period is intended to allow, among other things, the start of the recording of opt-outs of European patents and applications from the exclusive competence of the UPC. Therefore, owners of European patents and applicants of European patent applications should start reviewing their portfolios now and take a decision, as soon as possible, on which European patents and applications should be opted out of the UPC.

The UPC Agreement allows owners of European patents and applicants of European patent applications to “opt out” of the UPC regime.  European patents and applications that are opted out will remain under the current regime, in which the validity of a European patent, after the 9-month opposition period, can only be challenged at a national level in multiple national actions brought before the national Courts of the countries of validation.  However, these opted-out patents would also need to be enforced at the national level in each country where infringement occurs.  On the other hand, European patents and applications that are not opted-out will fall under the UPC system which provides, among its major benefits, the opportunity to obtain relief against infringers in all UPC signatory countries in a single infringement action. The corresponding drawback to this is that these patents also will be subject to invalidation in all UPC countries by a single invalidity action.

Patent owners and applicants should thus review their European portfolios and weigh the advantages and disadvantages of the UPC regime.  Owners should also consider whether their license agreements should be revised to give or prevent licensees the right to request that a licensed European patent is opted-out of the UPC regime.  Even expired European patents may be opted out of the UPC, which may in some cases be desirable to prevent a central action of revocation because the opt-out entered in the register in respect of a European patent automatically extends to any supplementary protection certificate (SPC) granted based on that patent.

Contrary to most expectations, according to the final draft of the UPC fees of February 25, 2016, no official fee is due for opting-out. However, owners should pay particular attention to accurately identifying all proprietors of the patents to be opted-out. In the case of missing or incorrect details in the opt-out application, the opt-out would be ineffective until such details are added or corrected and an action of revocation could be validly started before the UPC in the interim.

Osha Liang has tested the beta test internet site allowing for filing patent opt-out applications and is ready to proceed with filing opt-out applications during the provisional period, before the UPC Agreement enters into force.