The UPC Opt-out rule

The Unified Patent Court (UPC) is a new international patent court for those EU member states that have ratified the UPC agreement. The expected commencement date of the UPC is 1 April 2023. Our firm’s previous articles on the UPC and Unitary Patents (UP) can be found here and here.

 

What is the structure of the UPC?

The UPC is made up of a Court of First Instance and a Court of Appeal. The Court of First Instance is divided into local, regional, and central divisions. The central division will deal with revocation actions and declarations of non-infringement, while the local and regional divisions will deal with infringement actions.

How can I opt out of the UPC?

Assuming that Germany ratifies the UPC by the end of December, the Sunrise period will commence on 1 January 2023. During the Sunrise period, applicants of European patent applications and patentees may file a request to “opt-out” of the jurisdiction of the UPC for the lifetime of a patent. An “opt-out” may also be requested by applicants and patentees of classic European patents at any time during the transitional period of the UPC unless an action has been brought before the UPC prior to the filing of an opt-out request. For classic European patents granted after 1 April 2023 where an opt-out request has not been filed, actions may be brought either before the UPC or the national courts.

Opt-out requests are filed at the UPC registry via an online case management system. There is no official fee for the filing of an opt-out request. It is also possible to subsequently withdraw an opt-out request.

Why opt-out?

The main reason for opting out of the UPC is to prevent a third party from instigating revocation proceedings against a patentee which, if successful, would cause the patent to be revoked in each EU member state that has ratified the UPC agreement at the time the ruling is issued.

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