Should I opt out of the UPC?

With the pan-European court looming, it is decision time for patent owners, says Julia Gwilt of Appleyard Lees.

After years of uncertainty, both the Unitary Patent (UP) and the Unified Patent Court (UPC) could be live from as early as October 2022. 

These new systems will centralise patent protection and enforcement within many EU countries. All existing granted European patents (EPs) and pending EP applications will be impacted by the new systems and thus patent proprietors will need to make strategic decisions in relation to their EP patent portfolio over the next few months.

This first article in a UP/UPC series explores the most urgent decision for patent proprietors: should we request an opt-out from the jurisdiction of the UPC for our existing granted European patents?

Before considering whether to opt-out, some key features of the court are set out below.

Jurisdiction of the UPC

The UPC is a new centralised court through which: a patent proprietor can enforce their European patent against an infringer; and a third party can seek central revocation of a European patent.

Decisions by the UPC will be effective in all UPC member states including France, Germany, Netherlands and other EU states (17 in total at the time of writing). 

Infringement and revocation decisions for non-UPC countries such as the UK, Spain, Norway and Switzerland will continue to be made by the national courts.

The UPC brings unknown opportunities and risks and there will thus be a transitional period of at least seven years to provide better certainty for users.

Transitional period

During transition, the national courts of UPC member states will also have jurisdiction over EP patents which are effective in these countries. A patent proprietor can thus choose between centralised patent enforcement before the UPC or enforcement in individual national courts. Similarly, a third party can choose whether to revoke a patent before the UPC or a national court.

During transition, a patent proprietor can also request an opt-out to remove their EP patents from the jurisdiction of the UPC.  The patent proprietor can also withdraw this request at a later stage, for example, if they wish to initiate a pan-European infringement action.

Requirements and timings of opt-out

There is a sunrise period to allow the filing of opt out requests which will be effective on commencement.  It will be important to make use of the sunrise period to ensure that the opt-out request is not blocked by a third party initiating an action before the UPC.

Ownership may need to be verified before proceeding with an opt-out request because the true owner or owners must file the request.

The sunrise period may begin as early as July 2022 and so it is advisable to begin preparing now.

Factors that may influence whether to opt-out

There are various factors to consider when deciding whether opt out is your best option and different decisions can be made for different patents in your portfolio.  Some indicative questions are:

• Is there a risk of central revocation of your patent by a third party?
• If there is infringement of your patent, will it only take place in one EU country?
• Does the uncertainty of the new court present too great a risk to stay within its jurisdiction?
• Are you happy for other parties to be involved at the beginning to shape court decisions?

If most of your answers are ‘yes’, then opting out of centralised European patent protection may be the best option.

More information on what to expect from the UP/UPC can be found in Appleyard Lees’ latest podcast. 

Julia Gwilt is a partner at Appleyard Lees. She can be contacted at: julia.gwilt@appleyardlees.com

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