The delay of the opening of the Unified Patent Court (UPC) gives us some additional time to reflect on the topic of opting-out EP patents from the UPC’s jurisdiction. In this Q&A series, we will look at the questions we have been asked the most and give our views.
How do we make sure that the opt-out request is valid so that the UPC has no competence to hear a case in relation to the opted-out EP patent? Can we be sure?
The 1 March 2023 marks the start of the sunrise period before the full entry into force of the UPC Agreement on 1 June 2023. By now we are all more or less familiar with the process for opting-out EP patents or applications. We signed up this morning and hopefully we will be able to lodge our first opt-out requests with the registry of the Unified Patent Court (UPC) shortly. The opt-out request will then be published without any further checks by the UPC. This is the case whether the opt-out is valid or not.
A patent proprietor will want to double-check that all pieces of information in the opt-out request (in particular the patent number, the patent proprietor, etc.) are correctly recorded with the registry of the UPC. However, this is only a formal check and does not confirm that the opt-out request is valid. For instance, if the request is not made by or on behalf of the true proprietor(s) (see also our previous blog on “Who is entitled to file an opt-out request”), the opt-out will be invalid. So, the opt-out is in a stage of ambiguity – a Schrodinger’s opt-out. Actually, the validity of the request will only be assessed if and when box is opened, i.e., the opt-out request is challenged in the UPC.
How might this play out in practice?
There are voices advocating that the opt-out request can be reviewed in a stand-alone action with the UPC. However, Art. 32 of the UPCA provides an exhaustive list of all types of actions for which the UPC has competence. A stand-alone action to review an opt-out request is not on this list. So, this does not appear to be an option.
Rather, the more likely option to open Schrodinger’s opt-out box is to bring an action that is listed in Art. 32 UPCA in relation to an EP patent that has been opted-out – such as a stand-alone revocation action or an action for declaration of non-infringement – and at the same time challenge the validity of the opt-out. Of course, the UPC will then have to review the validity of the opt-out in order to determine whether they have competence for the case. The Court can do this either of own motion (the registry will check the opt-out status of the patent at stake) or upon objection by the defendant, most likely the patent proprietor). For example, if an action is filed with the UPC for revocation of a patent that was opted-out, the patent proprietor will likely object to the admissibility of the action on the ground that the UPC has no competence. The UPC will then have to decide whether the opt-out request is valid, and therefore whether the UPC is competent to hear the case.
Uncertainty remains
For patent proprietors, this situation appears to be unsatisfactory. However careful they are in putting the right information into the request to opt-out, a certain degree of uncertainty remains. Leaving aside apparent errors in the opt-out request (e.g. an error in the patent number or a typo in the name of the patent proprietor which can be checked by reviewing the request in the registry), issues evolving around the identity of the true patent proprietor(s) can cause headaches. However, on the flip side, it appears unlikely that a revocation action will be filed with the UPC if the patent has been opted-out, unless the claimant has knowledge of why the opt-out is invalid. In normal circumstances, it would seem unlikely that a potential claimant for revocation has sufficient information to assess whether the opt-out request was filed by a person(s) who was not entitled to do so. So, even where the potential claimant may have doubts, we expect that a registered opt-out has a deterrent effect that is sufficiently high to prevent a full-blown action to be filed with the UPC when this action runs the risk of being rejected as inadmissible. It will be interesting to see whether claimants for revocation will actually probe any opt-out requests in this way – we rather expect that the opt-out box is likely to stay closed.
How can we help?
If you have any questions about opting-out of the UPC, or any other UPC questions to add to the series, please get in touch with the team here.
