The limits of an ‘opt-in’ to the UPC


Sebastian Fuchs and Annika Kohlstock

The limits of an ‘opt-in’ to the UPC

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How and when can national actions block ‘opt-ins’ to the UPC? Sebastian Fuchs and Annika Kohlstock of EIP Amar dig into the court’s Rules of Procedure.

Immediately prior to the launch of the Unified Patent Court (UPC), there was heated debate among patent owners as to whether or not to declare an “opt-out” from the court’s competence.

Less discussed is the question of the extent to which an opt-out can be withdrawn at a later date in cases where an action has been brought before a national court (opt-in). This article focuses on the question under which circumstances a national action may preclude an opt-in.

Article 83(4) of the UPC Agreement (UPCA) provides for an application to withdraw an opt-out. A withdrawal of an opt-out, also referred to as opt-in, practically restores the parallel jurisdiction of the UPC and the national courts according to article 83(1) UPCA (BeckOK PatR/Augenstein EPC Art. 83 margin no. 41).

Unified patent court, UPC, patents, UPC Agreement, opt-in, opt-out, EIP, rules of procedure