Opt-out

Is the opt-out from the jurisdiction of the UPC for a classic European patent effective only during the transitional period under Article 83(1) UPCA or whether, once it has been notified during the transitional period, it is effective for the whole life of the patent?

It was the legislator's objective when providing for the possibility to opt-out, to give the patent holder the possibility to remove his European patent from the jurisdiction of the UPC for the whole life of that patent. This follows clearly from the fact that an opt-out can be notified until the very last day of the transitional period. The latter would make no sense and would not have been foreseen if the effect of an opt-out was to expire on the last day of the transitional period.

Article 83(3) UPCA stipulates that "a proprietor ... shall have the possibility to opt out from the exclusive competence of the Court." In this regard the question has been raised whether the provision must be interpreted such that the opt-out refers only to the exclusive competence of the UPC, and whether in fact the opt-out results in shared competence of the UPC and national courts.

If the effect of an opt-out was limited to removing the exclusivity of the UPC's jurisdiction, Article 83(3) UPCA would, at least during the transitional period, have exactly the same effect as Article 83(1) UPCA, i.e. result in shared jurisdiction of the UPC and national courts and a choice of forum for the parties. Thus there would be no need for two different provisions in Article 83 (1) and (3). Therefore it was the legislator's intent with the opt-out to give an alternative to patent holders, allowing them to remove their patents entirely from any jurisdiction of the UPC.

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 they 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 up to 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.

  1. Will it be possible to opt out a European patent for one or more of the States were it has been validated or must every patent derived from the same European patent be opted out at the same time?
    Pursuant to Article 83.3 of the UPC Agreement the possibility to opt out concerns a European patent granted or applied for before the end of the transitional period. That means that the opt-out once notified and registered takes effect for the entire European bundled patent for all Contracting Member States where this patent has been validated. There is no need to notify the opt-out separately for the relevant Contracting Member States.
  2. Where a European patent application or a European patent has several applicants or patent proprietors, must all applicants or patent proprietors agree to lodge the application for opt-out?
    The unity of an application and of the patent in case of several applicants or several proprietors is a basic principle of patent law, as reflected in particular in Article 118 of the European Patent Convention. This means that applicants or proprietors of one single application for a European patent or one single European patent will have to act in common to exercise the opt-out.
  3. Does an opt-out exclude all jurisdiction of the UPC?
    Once an opt-out has been notified and registered the UPC does not have any jurisdiction any more with respect to the European patent or the application for the European patent concerned. The patent or application will be subject only to the jurisdiction of the competent national courts.
  4. When an opt-out is registered for a European patent application, will it also apply to the European patent later granted?
    If an opt-out has been notified and registered with respect for an application for a European patent, the opt-out continues to apply to the relevant European patent, once granted.
  5. Does an opt-out remains in force for the entire life-time of a European patent?
    An opt-out once notified and registered normally remains in force for the entire life-time of a European patent, unless the proprietor withdraws the opt-out pursuant to Article 83.4 of the UPC-agreement.

Once you have logged into the Case Management System 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). Our 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.

Before the UPC starts accepting opt outs a process will be in place for instances where, after completing the opt out process, a user realises that a patent number was entered incorrectly. We are working closely with members from the Expert Panel and the drafting committee for the Rules of Procedure on how this may be reflected in the Rules.

First check with any co-proprietor(s) or representative(s) as to whether they have made the opt out application.

If the patent has been opted out by someone without authority to do so, a procedure will be in place before the UPC starts accepting opt out application, which will allow corrections to be made.

We are working closely with members from the Expert Panel and the drafting committee for the Rules of Procedure on how this may be reflected in the Rules.

All opt out requests will appear on the Register which will be publicly available on the UPC website. The Register will be updated within minutes of a 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 perhaps company name appear (e.g. via Google Alerts).

The Rules of Procedure allow the patent proprietor or authorised representative to opt out a patent. Without an up to date, definitive list of current patent proprietors it is difficult to restrict access. It is also necessary to permit an authorised representative to file an opt out application.

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. We’ve heard that some companies are looking at creating alert services that you can subscribe to, and it is possible for the EPO to read this data and notify the representatives, applicants and proprietors they store within their database.

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 UPC Case Management System is an entirely new system which is tailor-made to the UPC’s requirements, including its Rules of Procedure.

We would not be able to utilise existing Smart Card systems such as the EPO use, instead the UPC would need to roll out its own system.

In view of this, we have elected to use SMS and email for our two-factor authentication process. These two methods will be accessible to all users irrespective of country of origin.

The UPC is taking a balanced approach to identity assurance, which will enable users from across Europe and worldwide to access the system to manage cases and also to handle opt out for their patents.

The level of identity assurance being taken verifies that the person logging into an account is the owner of the account. This is because they have the relevant password and have access to the email/SMS message with a unique reference. This is in line with National and International requirements for Level 2 identity assurance which is considered appropriate for civil proceedings.

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 as possible. With this in mind, it is necessary to minimise the use of letters and also of face to face contact where not in a hearing.

The UPC Agreement specifies in Article 48 that patent attorneys must hold certain qualifications in order to represent before the court, and that a list of those with the relevant qualifications should be held by the Registrar. Article 48 does not require that there be a list of lawyers.