The key consideration for applicants and holders of European patents and SPCs is whether to opt out their published European patent applications, granted European patents and SPCs from the jurisdiction of the UPC.
Opting out of UPC
Navigating the transition period and beyond
The “transitional period”
We are currently in a “transitional period” during which it is possible to opt out of the UPC, provided an action has not already been brought before the UPC. The transitional period is seven years, but this may be extended by another seven years.
After the end of the transitional period, it will no longer be possible to opt out any European patents from the UPC.
Key points to the opt out
- Once a patent is opted out of the UPC it is possible to opt back in, however a second opt-out is not permitted. The opt-out will remain in force for the lifetime of the patent.
- Where a patent has been opted-out, the opt-out automatically extends to an SPC based on the opted-out patent.
- Where there are multiple applicants or patent holders, all parties must act in common to exercise the opt-out. For SPCs, where there has been an assignment so that the holder of the SPC is different from the patent holder, both the SPC holder and the patent holder must act in in common to exercise the opt-out.
- It is important to note that Unitary Patents cannot be opted out of the UPC.
Ensuring an effective opt-out
If you wish to opt-out, it is important to ensure that the opt-out is effective.
For an opt-out to be effective, the opt-out must be filed in the name(s) of the “true owner(s)”. The true owner(s) is the person(s) entitled to be registered as the patent holder or applicant, regardless of whether they are recorded as such on the EPO or national registers. As mentioned above, where there are multiple applicants or patent holders, all parties will have to act in common to exercise the opt-out.
In most cases, the true owner(s) will simply be the proprietor(s)/applicant(s) shown on the EPO or national registers.
However, careful consideration is needed where there has been a change in ownership.
For example, where an assignment of a granted European patent has only been recorded in some granted countries but not others, then the opt-out must still be filed in the name of the true owner(s), but the opt-out must be filed with a declaration that the listed parties are the true owner(s).
Additionally, the opt-out must be made for all states for which the European patent was validated. One interpretation is that the opt-out should also be made for all states for which the European patent was granted or were designated in the application, not only in respect of UPC participating member states and not only in respect of validated states, but also those in which the European patent was not validated or may have since lapsed. Where an assignment has occurred, we suggest identifying the true owners for each designated state by reviewing the chain of title for all states in which the patent was granted. If the assignment only refers to the validated countries of the European patent, we suggest that the opt-out names not only the assignee, but also the owner of the European patent in the non-validated countries, even though the European patent will have lapsed in those countries.
Failure to file the opt-out in the correct name(s) could result in the opt-out being invalid, which could result in that European patent unwantedly being under the UPC jurisdiction.
To ensure an effective opt-out, we recommend having a full appraisal of any changes in ownership now, before the sunrise period begins, so that we can ensure the correct documentation is completed. Please contact your usual Forresters attorney for further advice on this.
What happens if you do not opt out
During the transitional period, if you do not opt out your European patent, you can choose to bring an infringement action against competitors in either the UPC or before the national courts. Conversely, competitors can choose to bring a revocation action against patent holders in either court structure. Once an action is brought in a particular court structure, a patent is locked into this court structure for the remainder of the patent term.
If an action is brought before the UPC, the decision of the UPC will be enforced in all UPC member states. Thus, infringement relief can be granted in respect of all UPC member states and the patent can be revoked in all UPC member states.
Forresters’ opt-out watch service
We have set up a watch service that allows patentees to monitor the UPC opt-out status of their competitors’ European patents. For example, if a problematic competitor patent is past the nine-month EPO opposition window, but has not been opted out, a revocation action could be filed before the UPC to seek revocation of this patent in all UPC member states providing freedom to operate in a number of countries via a single revocation action.
