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6 March 2023PatentsMuireann Bolger

UPC receives almost 200 opt-out requests

First opt-out was filed just eight minutes after the CMS went live | Firms have three months to opt out of court’s jurisdiction | Discover what sectors have generated the most requests.

The Unified Patent Court (UPC), has recorded nearly 200 opt-out requests since its sunrise period kicked off on March 1.

Referring to a snapshot of the UPC’s case management system (CMS), Simmons & Simmons European and UK patent attorney Laurence Lai wrote on Kluwer Patent Blog that 150 patents and 49 patent applications were opted out of the UPC in the first three working days of its sunrise period.

The first patent opt-out was filed just eight minutes after the CMS went live.

The sunrise period allows patent owners to opt their patents out of the court’s jurisdiction before it opens and presents businesses with an important decision to make regarding their IP strategy.

Firms that choose to opt out can later opt back in as long as the patent has not been subject to national court proceedings in the meantime. However, withdrawing an opt-out is irreversible and can only be done once.

Medical and veterinary

In the first three days of the sunrise period, the data published by Kluwer shows that the most patent opt-outs were in the ‘medical or veterinary science’ category, indicating an expected reluctance to use an untested system for potentially high-value IP. The second highest category was ‘organic macromolecular compounds’, followed by ‘doors, windows, shutters’—but these may well change as large volumes of opt-outs are filed.

The number of patents or applications being opted out per applicant was low, with an average of just 1.8. Opt-out applications must be signed by all (not just registered) patent owners so those with more complex portfolios may take longer to complete ownership checks and file later in the sunrise period.

There are 581 people registered as UPC representatives, according to the early snapshot of data, with 475 of these being European patent attorneys. The countries with the most UPC representatives are currently Germany (239), the UK (98) and Italy (93).

Last year, the UPC agreed that despite the UK’s withdrawal from the UPC Agreement, UK European patent attorneys with certain qualifications will be able to appear before the court, with some conditions applied.

Information on opt-outs is accessible on the UPC’s website.

“Monitoring opt-outs filed by competitors may therefore give an indication of which patents are considered to be business-critical and may give an insight into competitor strategies,” Emmanuel Gougé, Gina Bicknell and Sarah Taylor of Pinsent Masons wrote in  WIPR last year.

“Similarly, monitoring the filing of divisional applications may also be informative, and may provide an insight into patenting strategies and potential product launches,” they said.

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