Opt out, stay in: how do we proceed in the case of co-ownership?

With the entry into force of the unitary patent, the unified patent court (UPC) and the associated transitional provisions, it will be possible to escape the competence of the UPC for European published applications and patents without unitary effect (OPT OUT), by the filing of a declaration made by the effective Applicant/Patentee, before the start of proceedings.

Without filing this declaration, the UPC will apply without any formality (STAY IN) to:

• European patent applications,
• European patents with unitary effect, and
• European patents without unitary effect.

For titles in co-ownership, all entitled Applicants/Patentees have to request the Opt Out.

The Opt Out is a purely declarative formality: there will be no verification by the UPC. Therefore, if it contains an error on one of the Applicants/Patentees, it will appear during a litigation and the benefit from the Opt Out may be lost.

It is therefore crucial to ensure the accuracy of the entitled Applicants / Patentees at the date of the declaration. We strongly recommend that you proceed with recording any transfer of rights before requesting an Opt Out for the title to opt-out.

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