Background
From the date the UPC came into effect (i.e. 1 June 2023), there is a transitional period of seven years in which it is possible for a European patent or European patent application to be opted-out of the UPC. It is possible for both European patents and applications to be opted out of the UPC provided that the patent/application was granted/filed before the end of the transitional period.
What is the opt-out scheme?
Under the opt-out scheme, a European patent or patent application can be removed entirely from the jurisdiction of the UPC. If a European patent has been opted out, the national courts retain sole jurisdiction. Once notified and registered, an opt-out remains in force for the patent’s lifetime (unless the opt-out is withdrawn). If an opt-out is notified and registered with respect to a European patent application, then the opt-out continues to apply to the relevant European patent once granted.
What can be opted-out?
The possibility of opting out applies to a European patent which has been granted or applied for before the end of the transitional period unless an action has already been brought before the UPC. Where an action has already been brought before the UPC, the action can only be dealt with by the UPC.
A supplementary protection certificate will automatically be opted out if the European patent on which it is based is opted out.
It is not possible to opt-out a European patent with unitary effect (Unitary Patent).
Who can do the opt-out?
The proprietor/applicant of a European patent/application, or their authorised representative, can opt-out. CMS is able to assist you with filing opt-out requests. A licensee cannot opt-out, but there may be contractual obligations in a licence which require the proprietor to consult the licensee about the decision of whether to opt-out. We suggest a review of licenses by the licensee and licensor. The inability to opt-out from the UPC equally applies to exclusive licensees.
Joint applicants/proprietors of a European application/patent need to act in common to exercise the opt-out.
When a European patent is granted, it becomes a bundle of national rights for which the EPO does not keep an active register.
Owing to the lack of an up-to-date central register of patent proprietors, the UPC system does not restrict access to the opt-out function to the registered patent proprietor. Therefore, a patent might accidentally be opted out by somebody without the authority to do so and it is sensible to set up a watch as now explained.
Keeping track of opt-outs
All opt-out requests are publicly available on a Register on the UPC website. The Register is continuously updated such that requests appear on the Register within minutes. Individuals can check the status of their patent/application on the Register. Individuals may also set up a watch to monitor a patent portfolio.
Withdrawing an opt-out
An opt-out can be withdrawn, which essentially amounts to opting-in, at any time unless an action has already been brought before a national court. If such a national action has been brought, it is not possible to withdraw the opt-out.
Once an opt-out has been withdrawn, it is not possible to opt-out for a second time.
