Frequently asked questions regarding the
Unified Patent Court (UPC) and the opt out process

The Unified Patent Court (UPC) is a new European court that will handle actions relating to the infringement and validity of European patents in those EU Member States that have agreed to participate (referred to as “UPC Member States”). The UPC will offer a new, centralised procedure for infringement and validity actions, i.e., where the court can consider the actions for all UPC Member States at one time. This could be less costly than taking separate actions in multiple states, but also runs the risk of revocation of the patent for all UPC Member States through a single action.

The process to obtain a European patent is not changed by the new UPC system. European patents will continue to be granted by the European Patent Office (EPO), based on a single European patent application.

After grant, it is necessary to choose in which of the 39 contracting states of the European Patent Convention (EPC) protection for the European patent is to be pursued. The EPC contracting states include all 27 of the EU Member States, as well as 12 non-EU states. A new Unitary Patent (UP) will be launched alongside the UPC so that after grant, there will be two routes to obtaining protection in EPC states:

• The “classical” national validation route which involves separately requesting validation in one or more of the 39 contracting states.
• The new UP route which involves a single request to cover all UPC Member States, thus avoiding separate validations in each state.

During an initial transitional period of seven years after the UPC system commences, infringement and validity actions for European patents validated in UPC Member States can be handled by either:

• The national court in each state, or

• The UPC

In other words, the patent owner or a third party has the right to initiate an action in either the relevant national court, or the UPC.

During the transitional period, the patent owner can file a request to opt out any European patent which is effective in one or more UPC Member State(s) from the UPC system.

The initial transitional period may be extended to fourteen years.

During a transitional period of at least seven years, a patent owner can avoid infringement or validity actions before the UPC for any granted European patent which is effective in one or more UPC Member State(s), by filing a request to opt out from the UPC. Once a European patent has been opted out of the UPC, no infringement or validity action can be initiated at the UPC by the patent owner or a third party unless the opt out is withdrawn. In other words, infringement or validity actions will be handled by the relevant national courts for that patent.

It is not possible to opt out a Unitary Patent (UP); infringement or validity actions will be handled only by the UPC for a UP.

There are 17 EPC contracting states which will be UPC Member States when the UPC becomes operational. These are:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

There are 22 EPC states that are not covered by the UPC, notably the UK.

Eight EU Member States are not participating in the UPC at the start but may decide to participate later. These are:

Croatia, Czech Republic, Cyprus, Greece, Hungary, Ireland, Romania and Slovakia.

2 EU Member States, Spain and Poland, do not intend to participate in the UPC.

The 12 non-EU states that are contracting states of the EPC cannot participate in the UPC. These are:

Iceland, Norway, Turkey, Switzerland, Liechtenstein, San Marino, Monaco, Serbia, Albania, North Macedonia, Montenegro and the UK.

As detailed above, there are several EPC contracting states that are not UPC Member States. There is no change for these states. Infringement and validity actions for European patents validated in these states will continue to be handled by the appropriate national court.

Once operational, the UPC can make decisions in relation to infringement, validity or other similar actions for the following types of patents:

• All existing granted European patents that have been validated and remain in force in one or more UPC Member State(s) – unless a request to opt out is filed.

• All future European patents as they grant and are validated in one or more UPC Member State(s) – unless a request to opt out is filed.
• All future European patents as they grant and are validated by requesting a Unitary Patent which takes effect in all UPC Member States – for which it is not possible to file a request for opt out.

Any supplementary patent certificates (SPCs) based on the above European patents will also be covered. The UPC can thus make decisions in relation to infringement, validity and other related actions for these patents and SPCs.

An opt out must be requested by or on behalf of the ‘true owner’ of the patent (i.e., the person or entity who legally owns the patent). Where a patent is jointly owned, all owners must agree to the opt out. If the ownership differs from that shown in the official register, additional documentation will be required to file the opt out request.

Legal instruments, such as licences or joint ownership agreements, may affect patent ownership and/or define who is entitled to make strategic decisions in relation to the maintenance of the patent. It is important to check that an opt out request complies with any such agreements.

Ownership will not be examined in detail by the Court Registrar, but ownership (and therefore the validity of the opt out request) can be challenged by a third party. Accordingly, it is important that ownership is verified before requesting an opt out.

It is possible, and may in some cases be advisable, to opt out some patents, and to leave others within the competence of the UPC. A patent owner can make different decisions for different patents.

We recommend obtaining a signed mandate to confirm that the opt out is:

• Filed by the representative entitled to opt out, and
• Is filed on behalf of all relevant owner(s).

The UPC does not charge an official fee to file an opt out request. A service charge is payable to us for the work we undertake to file the opt out on your behalf; there is a flat fee for the first patent/opt out request, and a lower fee for each subsequent patent/opt out request, where the patents are owned by the same owner(s).

If we need to conduct further work in relation to an opt out request, such as advising on ownership or licence issues, then this further work will be charged at our usual hourly rate.

The option to opt out will be available during the transitional period of at least seven years after the UPC system commences. An opt out request will be effective from the date it is entered into the register.

It is anticipated that there will be many opt out requests. Thus, the option to opt out will be available for three to four months before commencement of the UPC. Opt out requests filed in this period (known as the sunrise period – see ‘What is the sunrise period?’ below for more details) will be effective from the date the UPC system goes live.

The sunrise period will start on 1 March 2023 and will last until the UPC system starts. We strongly recommend filing any opt outs during the sunrise period, to ensure your opt out request is effective when the court goes live. This will prevent another party from taking action in the UPC against those patents that have been validated in UPC Member States (for example to invalidate them) before you can opt out.

A patent cannot be opted out of the UPC after litigation relating to that patent is started at the UPC. To eliminate this risk, a valid opt out request must be filed during the sunrise period.

An opt out can be withdrawn by the true owner(s), so that actions can be taken in the UPC. It is not then possible to file a second request to opt out. In other words, after withdrawing the opt out request, the validations in UPC Member States would then remain under the jurisdiction of the UPC for the rest of their lifetime.

It will not be possible to withdraw an opt out request if litigation relating to the patent is underway at a national court before the withdrawal is filed. If the withdrawal of the opt out request is blocked, the patent owner can only take actions in the national courts. Thus, filing an opt out request does carry a risk that the patent owner can be prevented from initiating an action before the UPC, for example to seek a single decision on an infringement action in multiple UPC Member States.

As with any new legal system, the first few years will be uncertain and it is difficult to predict how it will be implemented (for example whether it will favour patentees or infringers). When deciding whether to opt out a European patent that has been validated in a UPC Member State, it may be helpful to consider:

• The UPC provides a new opportunity for a single infringement action covering some or all UPC Member States. This may be a cost-effective way to obtain a decision against an infringer operating in many UPC Member States.

• Under the UPC, a patent can be revoked for all UPC Member States, in one decision (i.e., ‘central revocation’). Thus, any patents that have been opposed should almost certainly be opted out.

• Actions at the UPC are expected to proceed via a simplified procedure, and to be based on extensive written submissions submitted by the parties, at an early stage.

• It will take several years to develop the case law on how certain aspects of law such as claim construction and interpretation, tests for novelty and inventive step, and tests for infringement will be applied by the UPC.

At the end of the transitional period, opt out will not be possible; all granted European patents in UPC Member States will fall under the jurisdiction of the UPC by default. To avoid the UPC, national patents will need to be filed (i.e., patents granted via a national Patent Office instead of the EPO), because national courts will continue to handle infringement and validity actions for national patents. In some states (including Belgium, France and the Netherlands) it is not possible to obtain national patents via a PCT application, such that patent applications would need to be filed directly at the relevant national Patent Offices at the end of the priority year. The transitional period will last for at least seven years. We will contact you again for instructions as the transitional period comes to an end.