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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:
1
Do nothing (this way their European patents will automatically fall under the jurisdiction of the UPC).
2
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 (UP Services) opt-out procedure removes jurisdiction from 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 (UP Services) opt-out request for unitary patents.

Should I opt-out?

The (UP Services) opt-out decision will depend on many factors. There will be advantages in keeping some patents out of the UPC’s jurisdiction. In theory, one action brought before the UPC’s Central Division could lead to the revocation of the patent in all member states.

If you file an opt-out and they grant and validate it, they revoke the European patent. That will happen under separate actions in the national courts as they currently occur. However, it may be worth keeping at least some of your patents within the jurisdiction of the UPC.

We will individually evaluate each client’s patent.
Timing/order:
THE ‘SUNRISE’ PERIOD
NORMAL MODE
THE ‘SUNRISE’ PERIOD

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 file 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.

 

Important:

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.

 

We now recommend that holders of European patents and applications review their portfolios to decide which patents they wish to opt-out of the system. Of course, we are available to assist in this process, so please do not hesitate to contact us with your questions.

NORMAL MODE

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 you have already brought an action before the UPC.

 

During the transitional period, unless an action has already been brought before a national court, a declaration to opt-out can be withdrawn, but it is not possible to opt-out again.

 

In other words, the opt-out will be possible from the beginning of the sunrise period until the end of the transition period (seven years plus seven years).

Will will get in touch with you!

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