Unified Patent Court
Ein einheitliches Patentgericht für die Mitgliedstaaten der Europäischen Union
Unless an action has already been brought before the UPC, a proprietor of or an applicant for a European patent granted or applied for as well as a holder of an SPC issued for a product protected by a European patent has the possibility to opt out and this prior to the end of the transitional period.
After the deposit of Germany's instrument of ratification on 17 February 2023, the opt-out functionality in the Case Management System (CMS) will be operational from 1 March 2023.
When an action has already been brought before the UPC concerning the same European patent, European patent application or SPC, an opt-out can no longer be effected, Art. 83(3) of the UPC Agreement.
Since actions can only be brought after the entry into force of the UPC Agreement on 1 June 2023, any opt-out between 1 March and 31 May 2023 (sunrise period) cannot be prevented by an already pending action.
The application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application, Rule 5.1(b) Rules of Procedure of the UPC.
Where the patent or the application is owned by two or more proprietors or applicants, all proprietors or applicants shall lodge the Application to opt out, Rule 5.1(a) sent. 1 Rules of Procedure of the UPC.
All opt out requests will appear on the Register which will be publicly available on the UPC website. The Register will be updated after the completed opt out application.
An individual will be able to search the UPC website and check the register to see if their patent appears. Alternatively they may wish to set up an alert on their computer so that they are notified of instances where their patent, or the company’s name appear (e.g. via Google Alerts).
When opting out a validated European patent you will have to declare that you are the legitimate patent owner, and it will be irrelevant - at that point in time - if all registers show another party as the owner, see Rule 5.1(a) sent. 2 Rules of Procedure of the UPC. You will not be able to include any proof, such as, e.g., an agreement showing that you are the rightful owner, in the declaration of opt-out. The declared patent ownership will be verified only in case of a litigation and proof will have to be presented only if ownership is contested by opposing party.
All patents that have been opted-out will be published on the Court’s website for users or machines to search. The data will also be available in an open format, and via an API to allow machine access to the data and create alerts. The EPO will also display opt-out information on the European Patent Register.
No fee is to be paid for an opt-out.
If the opt-out application is lodged during the sunrise period it is immediately recorded but comes into effect when the Court opens. If lodged after the sunrise period, the opt-out is immediately effective upon registration.
No further confirmation will be issued.
See Rule 5.2 RoP - This may be necessary in rare circumstances for example if an SPC has been granted in respect of an expired European patent the holder of the SPC may wish to exclude the UPC jurisdiction in which case the underlying expired patent must also be opted out.
Yes, the application can be filed by any such a person who has an account on the CMS and who is either a Representative before the UPC, holds a mandate or is a Proprietor of the patent in question.
The person signing and lodging an opt-out must be a natural person with an account on the CMS. The mandate should therefore specify such a person. There is no basis on which a company can have an account on the CMS.
No. All actions linked to an Opt-Out / Withdrawal must be performed by the same user until the completion of all subsequent steps.
After completion the opt-out will be visible, for the user in his/her dashboard but it will be also visible in the “Opt-Out Register” and can be search on the UPC’s Website.
Yes, and the format required is a PDF / A file format.
The Rules of Procedure require the EP publication number (RoP 5.3(c)).There is no proposal to change this.
As soon as the Opt-Out is completely entered (and validated) it will be visible for “other” user either on the CMS or on the UPC Corporate Website in a dedicated section.
During the introduction of the opt-out (in progress), the opt-out is only visible by the user entering / acting on this Opt-Out.
Only one application is required provided that the person lodging the application is the representative of both applicants or has a mandate from both.
No, if the application is filed by a representative registered on the UPC’s list of representatives no mandate is required. However, a European Patent Attorney who is not registered as a representative must lodge a mandate even if he/she has an EPLC.
Yes multiple people may be authorized.
All owners must sign the same mandate.
Yes, this possibility is implemented into the CMS.
For proprietors of European patents or SPC or applicants for European patents and their representatives, there exists the possibility to lodge multiple and automatic Opt-outs in one step.
For this, an Application Programming Interface (API) is available to communicate directly and, in a secure way, with the CMS.
By design, one API call (communication of data through the API) can be used to opt out one patent with one application or if desired multiple calls can be used to opt out multiple patents each with its own application.
More details are available in the development section of the UPC Website. In this section, additional information is also available for public APIs.
Once you have created your account on the CMS and logged into it using your individual username and password you will be able to access the ‘applications’ menu. From there you will enter the number of your patent (this begins EP). The system will cross-check with the EPO database to identify which patent the number refers to and the name of the patent will be displayed. If this is correct, you proceed to confirm that you have the authority to opt this patent out of the UPC. If this is the incorrect patent, please check the patent number that you have entered.
If the Opt-out is entered (without an API) the applicant enters basic details in the CMS (for instance, for an application, the EP number). Other details (e.g. proprietors/holders of all relevant patents, etc.) appear in the separate pre-filled Application to be uploaded for which there is a template. The reason for this division is to keep the task of entering details on the CMS simple and quick.
If the person applying is not a representative, then a mandate, for which there is also a template, must be uploaded. Thus, there are only two templates if the API procedure is not followed.
The UPC will have coverage in up to 25 EU Member States, and at present there is no single identity verification system that applies across Member States. It is important to provide users in all the participating states with a system which works irrespective of any domestic requirements. The CMS is an entirely new system which is tailor-made to the UPC’s requirements, including its Rules of Procedure.
The UPC is unique as a court, and it has been written into the court’s rules that it will operate as much via digital means as possible. With this in mind, it is necessary to minimize the use of letters and also of face to face contact where not in a hearing. The strong authentication procedure also guarantees a proof of identity as the person who requested to get his/her identification card for the CMS system needed to provide a proof of his identity to the entity issuing the CMS access card.
An electronic address must be provided as part of the required details of the person lodging the application but is not required for the declaration section itself.
Yes, it is necessary to populate the country abbreviation section with all EPC States for which the European patent has been granted (see Rule 5.1(b) RoP).
During a transitional period the following options will be possible regarding European patents without unitary effect:
During the transitional period, actions for infringement or for revocation may still be brought before national courts (Article 83(1) of the UPC Agreement).
During the transitional period a proprietor of – or an applicant for – a European patent granted or applied for prior to the end of the transitional period will have the possibility to opt out the patent/application, unless an action has already been brought before the UPC. To this end, applicants/proprietors shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into the register. It will be possible to withdraw such an opt-out at any time (Article 83(3) of the UPC Agreement). There will be no possibility to opt-out a European patent with unitary effect.
The transitional period is seven years but may be prolonged with a further seven years by the Administrative Committee on the basis of a broad consultation with the users of the patent system and an opinion of the Court.
It is possible to opt out published European patent applications, European patents as well as Supplementary protection Certificates (SPCs). If a patent application is opted out, this will automatically cover any patent as granted or any SPC. The same applies to any SPC that is based on a patent that has been opted out. It is possible to opt out patents or SPCs that have already lapsed. However, it is not possible to opt out European Patents with unitary effect.
First check with any co-proprietor(s) or representative(s) as to whether they have made the opt-out application.
If someone without authority to do so has opted out the patent, a procedure under Rule 5A of the UPC Rules of Procedure is available to remove such unauthorized action.
This situation is foreseen in the Rule 5 (9) of the Rules of Procedure: "Where an application for a European patent subject to an opt-out pursuant to this Rule proceeds to grant as a European patent with unitary effect the opt-out shall be deemed to have been withdrawn and the Registrar shall as soon as practicable enter the withdrawal in the register.”
If an opt-out has been notified and registered with respect to an application for a European patent, the opt-out continues to apply to the relevant European patent, once granted.
The electronic address of the representative, if authorized by the proprietor, will be satisfactory.
Rule 5 was amended by the Administrative Committee to replace "Contracting Member States" for simply "states". The effect of this amendment is that all validations in all EPC states must be the subject of an opt-out.