The third article in this series considered the significance of Ireland hosting a local division of the Unified Patent Court (UPC). This fourth article will look at how the UPC will try to circumvent variations between national court systems by hearing civil litigation actions relating to European applications/patents, European patents with unitary effect (Unitary patents), and supplementary protection certificates (SPCs).
Under this competence regime, European applications and the “bundle” of national patents validated from a European patent will fall within the jurisdiction of the UPC, whereby the validated national patents will be litigated as a single European patent. However, during a transitional period of seven years after entry into force of the Agreement on the UPC, published European applications and granted European patents can be opted-out from the exclusive jurisdiction of the UPC, such that infringement or revocation actions can still be brought before a national court in respect of each individual validated national patent making up the European patent “bundle”. The opt-out will apply uniformly to all EPC Contracting States designated/validated in the European application/patent.
In order to be opted-out, the European application/patent cannot be the subject of an action before the UPC, and an application to opt-out must be lodged with the UPC registry at least one month before expiry of the transitional period. In the case of joint applicants/proprietors, the consent of all applicants/proprietors is required to apply for an opt-out. Multiple European applications/patents can be opted-out in an application, but a (yet to be fixed) fee must be paid for each European application/patent at the time of lodging the application in order for the opt-outs to be registered.
The opt-out will last for the life of the European application/patent, even after the European patent has expired, lapsed or been withdrawn. If an opt-out is registered for a European application, the opt-out continues to apply to the European patent granted therefrom. However, if a European application is opted-out, and is subsequently granted as a Unitary patent, the proprietor must notify the registry, at which point the opt-out will be deemed to have been withdrawn.
Unless the opted-out European application/patent becomes the subject of an action before a national court, the opt-out can be withdrawn at any time by notifying the registry. The application to withdraw an opt-out can be made in respect of one or more opted-out European applications/patents, but not in respect of individual designations/validations of the same European application/patent. Again, the application to withdraw an opt-out will be the subject of a set fee for each European application/patent to have the opt-out withdrawn.
Applicants/proprietors must carefully consider the possibility of withdrawing an opt-out, however, because any withdrawal will result in that European application/patent being excluded from a second/subsequent opt-out.
An application to opt-out a European application/patent or to withdraw an opt-out will also extend to any SPC based on the European patent, and the application to opt-out must be made by both the SPC applicant and the patent proprietor (unless of course the SPC applicant and the patent proprietor are the same person/entity). SPCs based on a Unitary patent cannot be opted-out.
So, to opt-out, or not to opt-out, that is the question– During the seven year transitional period, proprietors will have the option to initiate proceedings before the UPC or national courts, regardless of whether the European patent has been opted-out. Although the initiation of proceedings before the UPC will forego the need for separate litigation actions across Europe, an action before the UPC will cause a European patent to fall within the jurisdiction of the UPC and thereby place all validated national patents making up the European patent “bundle” at risk of a (counter)claim for revocation. Therefore, to avoid a single, central revocation action against all validated national patents, proprietors should consider opting-out European patents/applications. Proprietors may also find national court proceedings to be more favourable than UPC proceedings, the decisive policy of which remains unknown. The opt-out should be applied for as soon as practicable to pre-empt central revocation actions and in anticipation of the limited transitional period.
The transitional period can be extended for an additional seven years at the discretion of the Administrative Committee of the UPC; although the European Patent Office (EPO) is rumoured to start accepting applications to opt-out before the entry into force of the Agreement, meaning that applicants/proprietors should put consideration to whether any European applications/patents should be opted-out well in advance of the establishment of the UPC.