What does « opt-out » mean?
Opt-out is a request to withdraw a European patent or a published application from the jurisdiction of the Unified Patent Court (UPC).
When is an application for opt-out possible?
Once the UPC is running (from 1st June 2023) , opt-out is possible during a transitional period of 7 years from the entry into force of the UPCA (renewable once upon decision of the Administrative Committee of the UPC) (A.83(3) of teh UPC Agreement). After this transitional period of up to 14 years, European applications/patents which have not been the subject of an opt-out will be under the exclusive jurisdiction of the JUB for both validity and infringement.
Additionnally, opt-out applications will be possible during the sunrise period (1st March 2023-31st May 2023).
When can I file opt-out application for my European titles?
The opt-out can be requested at any time in the life of a EP application once it is published or for a granted patent, in force or expired EP patent provided that no action has already been brought before the UPC.
What are the key procedural steps to consider opt-out?
The first step is the publication of the EP application : While it is understood that the UPC has validity jurisdiction only for patents (A. 32d), the same article provides for several types of actions relating to patent applications, for which the UPC has exclusive jurisdiction, such as :
- Actions for damages or compensation arising from the provisional protection conferred by a published European patent application (A. 32f) ;
- Actions relating to the use of the invention before the grant of the patent and the right based on prior use of the invention (A. 32g).
The bringing of such an action during the examination of the application could thus defeat a subsequent opt-out decision.
The second key opportunity is upon grant of the patent. The issuance of the notification of the text intended for grant (R.71(3) EPC) might represent in practice a convenient milestone to consider opting-out the patent that is about to be granted.
Opt-out may also be filed any time after grant. In fact, the timing of the opt-out depends on a case-by-case strategy and may depend on the competitive context and the commercial interest of the patent. Note that the opt-out is reversible (once).
Moreover, if you choose the unitary effect at the grant of an application for which you had filed an opt-out, the opt-out will be deemed withdrawn (R.5(9)).
Why opting out during the sunrise period?
If there is a high risk of an invalidity action on one of your granted patents and you do not wish such proceedings to take place before the UPC, the opt-out should preferably be filed during the sunrise period (1st March-31st May 2023) to avoid a centralised invalidity action brought by a third party at the opening of the UPC (1st June 2023).