UPC Opt Out

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Edward Kelly 
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UPC Opt Out

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Opting out of the Unified Patent Court

The Unified Patent Court (“UPC”) is on track to begin in 2017 and will provide a single court to enforce conventional European patents and European Unitary Patents for all member states of the European Union (“EU”).  The UPC will allow the patent holder to avoid the burden of having to separately enforce its conventional European patent in each national court of each state of the EU where the patent is nationalized.  However, a UPC judgment, good or bad, will apply equally in states of the EU where a conventional European patent is nationalized or in all states of the EU for a European Unitary Patent.  For patent holders with conventional European patents that wish to remain subject to the existing national court systems of the EU, an opt-out scheme will be available following the establishment of the UPC during a brief transitional period. 

Why Opt out?

Opting out of the UPC could be important to certain patent holders.  One benefit of opting out is that it will remove a conventional European patent from UPC jurisdiction, which will subsequently prevent a single revocation action in the UPC from being applied to the patent in all the countries.  Once a conventional European patent is opted-out, it can only be attacked separately in individual European states.  However, for patent holders wishing to streamline patent enforcement of a conventional European patent, staying under the UPC jurisdiction has the advantage of streamlining litigation to a single action in a single court. 

While the period to opt out is limited, opting out is not forever.  Under Article 83.4 of the UPC-agreement, a patent holder may withdraw an opt-out.  Thus, a patent holder could opt out and avoid a revocation action in the UPC, but later withdraw the opt-out if the patent holder decides to pursue an infringement action in the UPC.  In addition, opting out with the possibility of opting back in again allows a patent holder to wait and see how the new UPC fares, and ensure that the quality of the judges and effectiveness of the UPC judgments before opting in and subjecting a conventional European patent to the UPC.

How to Opt out

Article 83.3 of the UPC Agreement allows a patent holder to opt out granted conventional European patents and pending European patent applications before the end of the transitional period.  For conventional European patents with multiple applicants and patent proprietors, all of the parties must agree to opt out of the UPC. 

A patent proprietor or an authorized representative may file a request to opt out a conventional European patent using the UPC case management system.  The patent holder or representative can log in to the UPC case management system, search for the respective patent, confirm their authority to opt out and then select to have the patent opted out.  A bulk opt-out feature will also be available on the case management system for holders of multiple conventional European patents.  There is no fee for an opt-out request, or subsequently withdrawing the opt-out request.