From 1 March 2023, when the Unified Patent Court (UPC) sunrise period starts, it will become possible to submit requests to opt out European patents and European patent applications. We have previously published on the opt-out procedure and the pros and cons of being within the jurisdiction of the UPC (see here).
To date there has been a focus on considering the opt-out question for existing granted European patents. However, as the start of the UPC draws nearer we are seeing clients begin to consider more closely whether they should opt out their pending European patent applications, and if so when they should do so.
To re-cap key features of the opt-out:
- It is only possible to opt-out a European patent application or patent once. In most situations the opt-out is reversible, i.e. once opted out you can opt back in later but you cannot then opt-out again.
- Where a Unitary Patent (UP) is obtained from the European patent, the European patent is opted in and cannot be opted out. If a European patent application is opted out and a UP is requested at grant the opt-out is withdrawn and the patent will be permanently opted in.
- A request to opt-out will be ineffective if an action has been commenced before the UPC in respect of the European patent application or patent prior to the date of entry of the opt-out in the register.
A European patent application may be opted out once it is published. The timing for publication of a European patent application varies depending on the type of application but typically it will publish several months after filing, and this will be the earliest moment at which the opt-out can be requested. If you wish to opt-out before the patent is granted, should you do so at this ‘early’ time point or wait until closer to grant?
Reasons to opt out ‘early’
The basic reason for opting-out a European patent application would be to ensure it is not ‘seized’ by the UPC through a third party UPC action, thereby becoming stuck within the jurisdiction of the UPC. However, pre-grant litigation is quite rare and to date the kind of action generally envisaged as possibly applying is an “Arrow declaration” (from Arrow Generics Limited v Merck & Co. Inc. [2007] EWHC 1900 (Pat)), which have previously been granted by UK Courts, and which make an order that a product or process is obvious or not novel, and hence an application or patent filed after a given date would be invalid if it covered that product or process.
It is not entirely clear whether the UPC would even entertain such declarations, although it has been suggested they could be within the UPC competence under Art 32(1)(g) (“actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention”). It is also unclear why a declaration which is focussed on the product or process should or could necessarily lock in a pending application to the UPC, even if the existence of that application was part of the justification for requesting the declaration. We expect these points will become clearer in time. It should also be considered that a hypothetical Arrow declaration at the UPC will be expensive: so it seems unlikely that, even if they are possible, they would be routinely launched just to try and lock applications into the UPC (remembering that third parties can still centrally attack all EP patents by filing an opposition shortly after grant at the EPO). Probably, they are more likely to relate only to divisionals of (or other closely related applications to) litigated or known blocking patents.
So, opting out early is a cautious approach which could be used for all applications but may be most appropriate for important applications where litigation is expected.
Reasons to opt out shortly before grant
The decision to opt-out is related to the decision on how to validate the European patent shortly after grant. With the start of the UPC, validation as a Unitary Patent (UP) will become an option. Opting out from the UPC and requesting a UP are mutually exclusive because all European patents giving rise to a UP must be within the jurisdiction of the UPC (i.e. are opted-in). If a European patent application has already been opted-out (e.g. following the ‘early’ route above) then requesting a UP at grant will withdraw the opt-out and the patent will be permanently opted-in to the UPC.
As a practical matter, applicants may wish to decide on the opt-out and whether or not to request a UP at the same time, and this may be best done once the European patent application has been allowed and prior to grant. Allowance of a European patent application happens when the EPO issue the Communication under Rule 71(3), following which there is time prior to grant to opt-out should that be wanted.
Reasons to further delay the opt-out
The commonly cited reason for opting-out is to remove the patent from the jurisdiction of the UPC such that a third party cannot pursue a central revocation action at the UPC. This may lead an applicant to a default position where they opt-out all of their European patents and applications.
But it is worth considering that opting-out may reduce the number of procedural options available to the proprietor in terms of enforcement. Therefore, where enforcement litigation is contemplated more thought may be required.
For example, at least one commentator considers that making an application for provisional measures at the UPC will not qualify as a UPC action that blocks a later filed request to opt-out. If this turns out to be the case, where a patent is not opted-out there is potential for the proprietor to explore a request for an ex parte preliminary injunction at the UPC and withdraw it if is rejected. The adverse party should not be informed, and the proprietor could then file a request to opt-out to avoid a central revocation action and seek the preliminary injunction before national courts. This possibility would not be available if the patent had already been opted out and then the opt-out withdrawn in order to test the prospect of obtaining a preliminary injunction at the UPC.
An opt-out is also only reversible if an action has not been commenced at a national court before the application to withdraw the opt-out is filed. In this scenario, withdrawal of the opt-out will be ineffective and an opted out patent could be locked out of the UPC.
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