Metida | Unitary Pantent Opt-Out Services

UP services

Opt-Out procedure

What UP opt-out services do we offer?

Opt-out procedures services along with the EP portfolio evaluation for the opt-out procedure

Relevance:

Proprietors should already make decisions regarding the opt-out option. They need to decide which of their granted and validated European patents, applications, and SPCs they wish to have opted out. Possibly together with their representatives in the opt-out process, if they want to use the short ‘sunrise’ period (more information below).

Opt-out procedure along with the EP portfolio evaluation for the opt-out procedure

Description and steps:

1. Please send us the portfolio of your current European patent applications, existing European patents which have been validated in one or more participating countries (which are still valid), SPCs you have.

2. We will evaluate which patents should opt out, and which should remain in the new UPC system.

3. You will need to file an opt-out request in Management System of the Unified Patent Court:

Order opt-out

Proprietors of each European patent have two options:

Do nothing ir Opt-out of the UPC (in this way European patents will automatically fall under the jurisdiction of the UPC).

Opt out from the UPC.

Why to opt-out?

The most crucial reason to opt-out would be to avoid a UPC revocation action.

The UPC will have jurisdiction over:

Disputes (due to infringements, revocation, a declaration of non-infringement, et cetera) relating to the unitary patents themselves;
Traditional European patents. One or more participating countries must have previously validated them;
Pending European patent applications;
SPCs.

The effects of opt-out

The UPC. Then the national courts remain the sole jurisdiction. It applies to existing European patents that opt out of the UPC and have validation in one or more countries. Pending European patent applications and SPCs also fall under these conditions. Once you select an opt-out for a European patent application, that opt-out will continue to apply for granted and validated European patents. However, you cannot file any Opt-out request for unitary patents.

Should I opt-out?

The opt-out decision will depend on many factors. There will be advantages in keeping some patents out of the UPC’s jurisdiction.
One action brought before the UPC’s Central Division could lead to the revocation of the patent in all member states. In case opt out is filed, granted and validated European patents are revoked in separate actions in the national courts in the way they are revoked now.

However, it may be worth keeping at least some of your patents within the jurisdiction of the UPC.

Timing/order:

THE ‘SUNRISE’ PERIOD

NORMAL MODE

THE ‘SUNRISE’ PERIOD

Length

A safe ‘sunrise’ period is expected to last for three months before the start of the UPC.

Conditions to opt-out

Before the start of the UPC, there will be a safe ‘sunrise’ period (we expect it to last for three months), during which cited patents can be opted out. If you do not file an opt-out during the sunrise period and someone files action for the relevant European patent before the UPC, it will not be possible to opt-out when this fully enters into force.

During the transitional period, you can withdraw a declaration to opt-out, but it is impossible to opt-out again.

What should I do now?

Proprietors should already make decisions regarding the opt-out option. They need to decide which of their granted and validated European patents, applications, and SPCs they wish to have opted out. Possibly together with their representatives in the opt-out process, if they want to use this short sunrise period.

NORMAL MODE

Length

The transitional period will last sevent years plus sevent years. During the period you can file a UPC opt-out at any time for a granted or pending European patent application.

Conditions to opt-out

During the transitional period (of seven years plus seven years), you can file a UPC opt-out at any time for a granted or pending European patent application. It applies if no action has already started before the UPC. Opt-out is not possible if an action has been already file before the UPC.

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