Opting out of the Unified Patent Court
The UK ratified the Unified Patent Court (UPC) Agreement in April 2018 and has consistently indicated that it intends to participate in the UPC and Unitary Patent (UP). However, there are differing views as to whether it will actually be possible for the UK to remain part of the UPC system after it leaves the European Union (‘Brexit’).
In principle, the UPC will open its doors and the UP will become available to European patent applicants three months after the Agreement comes into force. However, at present it is not clear when this will happen because of the uncertainty surrounding Brexit, as well as an outstanding legal challenge in the German Federal Constitutional Court. These factors have delayed ratification by Germany and hence the coming into force of the UPC agreement.
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 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:
The opt-out procedure has the following features:
Some pros and cons of each option are provided below.
1. Do nothing or “Auto-in”
|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.
|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.
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:
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.
|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.