In anticipation of the Unitary Patent (UP) and the Unified Patent Court (UPC), European patent owners should be considering whether or not to opt out their existing and future European patents and applications from the jurisdiction of the UPC.
As a brief recap, from the day the UPC begins, all European patents and applications will automatically come under the jurisdiction of the UPC unless they are opted out. If a patent is not opted out, then litigation can be handled in the UPC rather than via the national courts. The decision of whether to opt out is therefore a rather important one given its potential consequences for the fate of a patent.
But how does one decide whether to opt-out a patent? This is the potentially million-dollar question that is being pondered by IP departments around the world. For an individual patent, the decision to opt out (or not) carries with it a number of opportunities and risks.
Potential advantages of opting out
- No central revocation – if a third party wants to attack your European patent after the opposition period, then they must do so separately in each country rather than centrally at the UPC
- You won't get stuck using the UPC unwillingly – if an action is started at the UPC before an opt out is registered, then you can no longer return to national courts even once that action is concluded
- More predictable court decisions – the UPC will have no case law at the outset and decisions which depart from national practice are possible
- You can withdraw your opt out if you want to obtain some of the benefits of litigating at the UPC
Potential advantages of NOT opting out
- Central enforcement and injunctions – you can bring an infringement action in respect of all UPC participating states centrally at the UPC and obtain an injunction that covers all of the UPC participating states – potentially at much lower cost than seeking injunctions in all of the UPC participating states individually
- No additional costs for arranging/filing opt-out requests – there is no official fee for opting-out but there will be administrative costs
- No need to review and confirm ownership details – an opt-out can only be validly filed by the true proprietor, so it will be important to double-check this is correct
- Direct access to fast decisions – the UPC is intended to be faster and more streamlined than national courts, meaning quicker decisions from the court and earlier certainty for all parties
- The UPC is a specialist court dealing ONLY with patent cases, so the judges etc. will be true experts in the relevant law
- You have the opportunity to participate in shaping the early case law of the UPC – the UPC judges will take guidance from the national law and courts, but there is an opportunity to depart from national precedent
- You can still bring action in a national court if you wish – although this will lock you out of the UPC for later actions
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.