Opt-outs from the exclusive competence of the UPC

Although the UPC will officially start on 01 June 2023, it is now possible, for or on behalf of the true owner(s), to lodge an application to opt out published European patent applications, European patents (EPs) and granted supplementary protection certificate (SPC) based on them, from the exclusive competence of the UPC, in accordance with Article 83(3) UPCA. According to Rule 5(12) Rules of Procedure, “applications (to opt out) accepted by the Registry (of the UPC) before the entry into force of the [UPCA] shall be treated as entered on the register on the date of entry into force of the [UPCA]”. However, the European patents with unitary effect (unitary patents, UPs) cannot be opted out.

Sunrise period

The sunrise period therefore offers a head start to patent owner(s) and enables them to opt out published European patent applications and classic European patents, before competitors, who have an interest in invalidating a European patent, can file an action at the UPC on the day the UPCA enters into force.

Also during the sunrise period, which will end on 31 May 2023, lawyers authorised to practice before a court of a contracting member state according to Article 48(1) UPCA, and European Patent Attorneys having appropriate qualifications according to Article 48(2) UPCA and the Rules on the European Patent Litigation Certificate and other appropriate qualifications (EPLC Rules), can now register as representatives before the UPC. This registration is, of course, also in connection with the applications to opt out on behalf of patent owners.

The UPC is the first fully digital court, with a tailor-made case management system (CMS). Access to and the authentication process of the CMS are based on a strong authentication scheme requiring certificates provided by certain qualified trust service providers (QTSPs) under the eIDAS regulation; and applications for opt-out must be filed via the CMS.

According to Rule 5(1) Rules of Procedure, any “European patent (including a European patent that has expired) or … published application for a European patent” may be opted out. Since its start in 1978, the European Patent Office (EPO) has published more than 3,655,000 European patent applications, for which close to 1,893,000 European patents have been granted

Avoid last-minute opt-out actions!

The UPC is aware of potential huge congestion during the sunrise period and strongly advises users not to wait until the last couple of weeks of the sunrise period to lodge applications to opt out. The UPC also asks organisations planning large-scale opt-outs to inform the UPC beforehand.

During the sunrise period, the functionality of the CMS is limited to applications to opt out and registrations as representatives before the UPC. Filing of actions and protective letters, for example, will become available once the UPC starts.

Unless an action has already been brought before the UPC, an application to opt out may be filed later when the UPC has started, until one month before the end of a transitional period of seven to up to fourteen years according to Article 83 UPCA. To reverse an opt-out, an application to withdraw an opt-out may be lodged once for or on behalf of the true owner(s).

After the end of the transitional period, the UPC will eventually become solely responsible for infringement and validity proceeding relating to both classic European patents that have not been effectively opted out, and unitary patents for all participating EU member states.

Now is the time to deal with opt-outs

Echoing the UPC’s advice, it is recommended to deal with any opt-outs of published European patent applications, classic European patents and any associated granted supplementary protection certificates with urgency.

Further opt-out guidance

We have published a detailed guide to UPC opt-outs which can be viewed here: www.dyoung.com/faq-opt-out.

We also consider the pros and cons of the unitary patent and the Unified Patent Court, with accompanying unitary patent and UPC “decision trees” to assist with your opt-out decisions: www.dyoung.com/en/knowledgebank/articles/up-upc-pros-cons.

If you would like further assistance or advice, or a more detailed comparison of costs, please do contact your usual D Young & Co representative.

Useful links

"Sunrise Kick Off", UPC news release, 01 March 2023: www.unified-patent-court.org

"Practical information on the upcoming launch of the sunrise period", UPC news release, 27 February 2023: www.unified-patent-court.org