UPC: Opting Out Might Be Possible Starting From September 2017

By: Francesca Giovannini

Following the UK’s decision to leave the European Union (EU) and months of uncertainty concerning what measures the UK government would take to implement that decision, the IP community was generally quite surprised by the announcement made by the UK Minister for IP at the EU Competitiveness Council in Brussels last November. On that occasion, the Minister announced that the Agreement on the Unified Patent Court (UPC) would be ratified by the UK. Although this clarification was welcomed by the European Commission, the EU Member States, the EPO and many in the IP community because of the value attributable to a unitary enforcement system including the UK, nevertheless it remained unclear how the UK would continue to be a member of the UPC after leaving the EU and still accept the jurisdiction of the Court of Justice of the EU at least in EU-related patent matters.

Despite the ongoing uncertainties, the UPC Preparatory Committee has now announced it is working under the assumption that the Agreement can enter into force and the Unified Patent Court may become operational in December, 2017.

If this assumption is correct and if no further delay is experienced in the ratification process of the Agreement by the two remaining mandatory ratifying countries (i.e., UK and Germany), owners of European patents and applicants of European patent applications should review their portfolios and make a decision as to which European patents and applications should be opted out from the exclusive competence of the UPC. The so-called sunrise period will allow opting out European patents and applications before the UPC becomes operational and, in the present scenario, could start from September, 2017 (or slightly before) and end before December, 2017.  Therefore, to be on the safe side, the decision should be made sufficiently early to enable filing all desired opting-out requests during this period.