How do I decide whether to opt out of the Unified Patent Court?
The Unified Patent Court (UPC) allows granted European patents to be enforced or challenged centrally and for a single ruling to be given that applies across multiple EU countries. The UPC is the default forum for matters relating to European patent rights in the participating EU countries, unless the patent is opted out.
If a European patent is opted out and then national proceedings are started in a participating UPC country, it will not be possible to opt back in and have the UPC as a forum for that patent. So the patent will be locked out of the UPC system.
However, if a patent is not opted out and then UPC proceedings are started, it will not be possible to use national courts for any of the countries that are part of the UPC system in relation to that patent. So the patent becomes locked into the UPC system.
Therefore, it is recommended that owners of granted European patents should make an informed and deliberate decision as to whether any of their patents should be opted out.
What are good reasons for opting out?
- You don’t want your patent to be centrally vulnerable for its entire lifetime; once the EPO’s opposition period is over you want to force any challengers to have to attack on a country-by-country basis.
- You are concerned that the cost of litigation before the UPC will likely be higher than the cost of litigation in one national court.
- Where there are complex ownership or licensing situations, involving multiple parties, meaning that it is difficult to coordinate a single central action, or it is desirable to allow the parties to coordinate actions in their own national courts.
- The terms of licensing arrangements for the patent mean that a central attack could have severe adverse effects on licensing revenue stream.
- You want to make it more difficult for a competitor to ‘clear the way’ for launching a product across multiple EU countries.
- You want to maintain the status quo.
What are good reasons for staying in the UPC system?
- You are considering infringement action covering multiple EU countries and therefore the ability to get a pan-European decision and injunction is valuable to you.
- You want to present a deterrent to potential infringers that there is the possibility of a pan-European injunction and damages.
- You don’t expect your patent to be challenged and don’t want to handle the administration involved with opting out.
- You have other IP rights, e.g. a pending European divisional or granted national rights, which you feel sufficiently preserve your position even if there was a central attack.
If you would like further advice on whether opting out is right for your European patent, please refer to our handout or contact your usual Barker Brettell attorney.
