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OPTING OUT OF THE UNIFIED PATENT COURT

OPTING OUT OF THE UNIFIED PATENT COURT

The UK government announced in November 2016 that the UK will ratify the Unified Patent Court (UPC) Agreement.  This was a clear indication that the UK will participate in the UPC and European Unitary Patent (UP).  In other words, the UK’s decision to leave the European Union on 23 June 2016 did not stop the UK wanting to participate in the UPC and UP.

Political activity in the UK and a new legal challenge in Germany has delayed ratification by Germany and the UK.  Ratification by Germany and the UK is now expected to occur at the start of 2018.  The UPC will open its doors and the UP would become available to European patent applicants three months after the Agreement comes into force.  However, there have been many delays to the start of the UPC and the UP, and further delays may occur.

All European patents will automatically fall under the jurisdiction of the UPC.  However, it is possible for patent proprietors and applicants to “opt out” of the UPC.  This information sheet sets out briefly how opting out of the Unified Patent Court is expected to work and our view of some of the possible advantages and disadvantages of opting out.  It accompanies our information sheets relating to the UP and the UPC.  Please refer to these other sheets for more information.

Existing European patents and published patent applications

Existing granted European patents will automatically fall under the jurisdiction of the UPC when it comes into force, unless the patent proprietor “opts out”.

Therefore, all proprietors have a choice of two options for each European patent:

  1. Do nothing (thus automatically under the jurisdiction of the UPC, herein “auto-in”); or
  2. Opt out of the UPC.

The opt-out procedure has the following features:

  • The opt-out procedure will only be available for the first seven years (extendable up to 14 years, on review after 5 years) from when the UPC comes into force. After this time, all patents granted by the EPO will fall under the jurisdiction of the UPC;
  • An opt-out lasts for the life of the European patent (unless the opt-out is withdrawn – see below);
  • There will be a sunrise period before the UPC comes into force when proprietors will be able to lodge their opt-out starting from the date when the UPC Agreement comes into force (thought to start in early to mid 2018);
  • Patents that become subject to proceedings in the UPC cannot then be opted out
  • Withdrawal of an opt-out can be done at any time (i.e. to take the patent into the jurisdiction of the UPC);
  • It will not be possible to “opt out” for a second time (after an opt-out withdrawal); and
  • A single request opting out more than one patent (“bulk” opt-out) looks possible but not confirmed as yet.

Some pros and cons of each option are provided below.

1.  Do nothing or “Auto-in”

 Pro  Con
Occurs automatically, thus no action is required Not possible to opt out of the system if proceedings are issued in the UPC

Please see our information sheet on the UPC for more information, pros and cons with respect to the UPC.

2. “Opt-out”


Pro

Con

Procedure “as normal”

Have to actively opt out – potential for “bulk” opt-outs, but unclear at this stage

Avoid initial uncertainties over procedure, cost and quality

Either opt out for all contracting states or none.  In other words, cannot selectively opt out for some contracting states but not others

Can “opt in” at any time for central infringement action

If the patent has more than one proprietor, then all proprietors must agree to opt out

No official fee for opt-out

The opt-out procedure is also available to currently published EP applications.  A small benefit of opting out pending applications is to guarantee that the application will not fall under the jurisdiction of the UPC when granted.  However, a withdrawal of the opt-out will be required before grant if the Applicant decides to pursue an UP.

It seems sensible to take decisions on selection of UP, confirmation of designations (for conventional EP) and consideration of opting the EP out of the jurisdiction of the UPC at the same time as responding to the EPO communication under Rule 71(3) EPC (intention of allowance) letter.

Options for patent portfolios?

  1. Leave everything opted in. This option puts faith in the new system.  The option allows the possibility to obtain pan‑European injunctions, gain early experience of the Court and potentially shape early case law.  However, this option is likely to be seen as a risky strategy, particularly for high value patents.
  2. Opt out everything. This option allows the patent proprietor to see how the system develops in the first few years before committing to the system.  Such an option allows the proprietor to carefully review their portfolio to decide whether or not to opt in some or all patents (see option c below).
  3. Decide on a patent-by-patent basis before the UPC comes into force. The proprietor may, for example, decide whether or not to opt out on the relative importance and strength of each patent. For example, a proprietor may decide to opt out the relatively weak ones and/or very important patents, while may decide to leave in the relatively strong and/or less important patents.  In addition, it would be wise to take into account whether or not a patent has been opposed or is being opposed.

“Future” EP patents

The introduction of the UP and the UPC should also be considered when considering future European patent filing strategy. In particular, European patent applications receiving a Rule 71(3) EPC communication in late 2017 and 2018 could theoretically be converted into an UP on grant (if grant can be delayed until after the UPC Agreement comes into force).

All European patent proprietors will have a choice of three options on grant of each European patent application:

  1. UP + optionally non-EU EPs
  2. EP – do nothing (“auto-in”)
  3. EP – opt out of UPC

See above and our information sheet on the UP for more information about these options.

What about national filings?

Eventually, the UPC will have jurisdiction over all patents granted by the EPO (for both UPs and conventional European patents).  The earliest possible date for this will be seven years after the UPC comes into force (potentially 2025).

After this time, the only way to avoid the UPC will be to file national applications in Europe.  For example, it is possible to enter a UK or German national phase application from a PCT application.  The resulting UK or German patent will not fall under the jurisdiction of the UPC.  However, it is not currently possible to enter the national phase of a PCT application in France.


Pro

Con

Avoid UPC all together

Have to decide for France before end of 12 month priority period – no national phase entry in France (as yet)

Lose benefit of single prosecution and translation costs of using the EPO (for applications longer than around 20 pages and three or more European countries wanted)



This information is simplified and must not be taken as a definitive statement of the law or practice.