By default, all European national patents granted by the EPO having effect in the countries participating in the Unified Patent Court are subject to the jurisdiction of the Court. Patent proprietors do, however, have the option to opt such patents out of the jurisdiction of the Court.
It should be borne in mind that opt-outs are defensive in nature, as they protect such patents from being revoked in a single court action, whereas now any revocation actions would have to be brought on a country-by country basis. Provided that no national infringement or revocation proceedings have been brought with respect to patents which have been opted-out from the jurisdiction of the Court, a patent proprietor can revoke an opt-out and bring an infringement action in the Unified Patent Court at any time.
Procedure for Opt-Outs
Opting out is an administrative act. There is no fee. The opt-out needs to be filed with the European Patent Office.
An opt-out applies to all existing European national patents arising from the same European patent application.
All owners of the European national patents which originate from the same European patent application must approve the filing of an opt-out. This includes all of the owners of European patents in force in non-participating member states such as UK, Spain, Poland, Switzerland, and Turkey.
It is only patent proprietors who have the right to opt patents out of the jurisdiction of the Unified Patent Court. Licensees, including exclusive licensees, do not have any such right. If licensees want to have a patent opted-out from the jurisdiction of the Court, they will require the consent and agreement of the patent proprietor.
Provision will be made for filing applications for opting out multiple patents simultaneously, and the Administrative Committee has issued an Application Programming Interface (API) which is compatible with the Court’s IT systems, enabling applicants to determine how to extract information from their existing patent databases and convert them into a form which will be compatible with the opt-out system.
Opt-outs can be filed with respect to any pending European patent applications, in which case, unless the opt-out is withdrawn, any granted European patents are never subject to the jurisdiction of the Court.
Opt-Outs - Timing
Opt-outs may be filed as soon as the “sunrise” period begins, which is three months from the date when the Court opens. This is expected to begin sometime in late 2022. Opt-outs will continue to be available during a transitional period, which will last for seven years and may be extended by a further seven years. This is likely to extend through 2029 or possibly 2036.
A revoked opt-out applies for the lifetime of the patent, provided it is filed before the end of the transitional period.
Key Factors to Consider
The following are likely to be the key factors in deciding whether or not to opt patents out of the jurisdiction of the Unified Patent Court.
- Is the patent being or going to be maintained in multiple jurisdictions?
- What is the potential cost if protection is lost in multiple jurisdictions?
- How likely is it that third parties would want to file a revocation action to revoke a patent?
- How likely is it that a revocation action would succeed?
These factors impact different technology sectors in different ways, as summarized in the table below.
Given the relatively low opportunity costs involved, if there is any realistic chance that a third party would seek to initiate a central revocation action then the default should always be to opt-out to prevent that central attack.
The only costs involved are the low administrative cost of requesting the opt-out and the (possibly quite theoretical) possibility that a third party might seek to initiate national revocation proceedings against a patent, thereby preventing a proprietor from revoking the opt-out at a later date and preventing the proprietor from central enforcement of that patent.