Momentum is clearly building towards the day when the UPC will open for business. Therefore, it is imperative that patentees and their competitors now begin to assess the approach they wish to take to unitary patents in their businesses and how to deal with European patents ("classicals", to distinguish them from unitary patents) in the UPC. In particular, this means addressing the issue of opt-out. To assist, we have prepared four articles this month addressing different aspects of opt-out.

This article explains the procedure for opting-out and withdrawal of an opt-out.

A classical European patent may be opted-out after the UPC comes into force, or before:

Opt-out after the UPC is in force

In order to exercise the opt-out of a classical European patent or application from the exclusive competence of the UPC (see UPC opt-out and withdrawal: meaning and effect), together with any SPC granted on the basis of it (see the effect of opt-out on SPCs), an Application must be lodged with the Registry.

The procedure for lodging the opt-out is contained in Rule 5 of the Rules of Procedure1. The Application must contain:

  • the details of the patent/s (and any SPC/s granted on the basis of the patent/s) and application/s at issue - including numbers and, where relevant, designated states;
  • the name of the proprietor/s or applicant/s for the relevant patent/s (as well as the name/s of the holder of any SPC/s based on it) and their postal and, where applicable, electronic addresses. It is not clear whether a proprietor in this context includes an exclusive licensee (see responsibility for opting out (and exclusive licensees))

According to the present draft Rules of Procedure, one fixed fee shall be payable before the Application can be entered in the Register, which fee covers all designations of the patent and SPCs that are granted on the basis of those designations. The level of this fee has not yet been announced and is politically still disputed.

The opt-out is effective from the date of entry in the Register.

Opt-out before the UPC is in force (the "sunrise" provision)

Concern has been expressed during the drafting of the Rules of Procedure that an action to revoke a family of classical European patents, or for a declaration of non-infringement in respect of those patents, could be lodged in the central division of the UPC on the first day of its coming into force before the proprietor has the opportunity to exercise an opt-out and thus preventing such an opt-out. To address this, a "sunrise" provision2 has been included to allow proprietors to opt-out classical European patents at the European Patent Office before the UPC Agreement comes into force. The EPO will then transfer all such opt-out applications to the Registry on the day that the UPC Agreement comes into force, deeming them effective from that date and preventing pre-emptive actions (see UPC opt-out and withdrawal: meaning and effect).

Such Applications are subject to the same fee as above and must comply with any formalities stipulated by the EPO.

Withdrawal of the opt-out

Like an Application for opt-out, a withdrawal of an existing opt-out must be made by lodging an Application to withdraw the opt-out with the Registry3.  Again, like an Application to opt-out, a fee must be paid before the Registrar will enter the Application to withdraw in the Register. Subject to this, the Application will be entered as soon as possible and be regarded as effective from the date of entry in the Register.

It is the responsibility of the Registrar to notify the European Patent Office of entries in the Register of both opt-outs and withdrawals.