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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 be opted out, and which will remain in the new UPC system.
3. An opt-out request will be needed to be filed in Management System of the Unified Patent Court:
Order opt-out
Proprietors of each European patent have two options:
1
Do nothing (in this way their European patents will automatically fall under the jurisdiction of the UPC).
2
Opt -out of the UPC.

The most important 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, etc), relating to the unitary patents themselves as well as to existing traditional European patents which have previously been validated in one or more participating countries, along with pending European patent applications, and SPCs. The opt-out procedure removes jurisdiction from the UPC, and the national courts remain the sole jurisdiction for existing European patents which have been opted out of the UPC and which have been validated in one or more countries, along with pending European patent applications, and SPCs. Once an opt-out has been selected for a European patent application, that opt-out will also continue to apply for granted and validated European patents. Any opt-out request, however, cannot be filed for unitary patents.

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

Prior to the start of the UPC there will be a safe ‘sunrise’ period (which will be expected to last for three months), during which cited patents can be opted out. If an opt-out is not filed during the sunrise period and an action has been filed for the relevant European patent before the UPC, when this fully enters into force it will not be possible to then to opt-out.

 

During the transitional period a declaration to opt-out can be withdrawn, but it is not possible to opt-out again.

 

Proprietors should already make any decisions regarding 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 make use of quite a short sunrise period.

 

We now recommend that holders of European patents and applications review their portfolios in order to decide which patents they wish to opt-out of the system. We are of course 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), a UPC opt-out can be filed at any time for a granted patent or a pending European patent application if no action has already started before the UPC. Opting-out is not possible if an action has already been brought 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).

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