Stay or go?

Do you prefer to continue relying on the proven quality of national court proceedings? Or perhaps you are interested in protecting your patent(s) in only one EU country? For such cases, you have the option of excluding your traditional European patent (EP) from the jurisdiction of the UPC by “opting out”.

Opting out: the essentials

Deadlines and formalities for opting out

An opt-out can be declared within a transitional period of seven years from 1 June 2023, whereby your already granted European patents (EPs) remain in the existing system and the national courts retain their jurisdiction. The transition period can be extended for up to seven more years.

During this time, infringement or invalidity actions can still be brought before national courts. The opt-out request must be filed with the UPC itself (not with the EPO), as things stand at present (November 2021) electronically via the case management system there.

Even for an EP granted or applied for before the end of this (maximum 14-year) transitional period, you can exclude the jurisdiction of the UPC by opting out. In order for you to do this, no action may have been brought before the UPC up to that point. You can also withdraw from the opt-out (“opt-back-in”) as long as no action has so far been brought before a national court.

Opting out: pros and cons

Whether you choose to opt out and continue pursuing European patent protection under many national jurisdictions, or whether you choose to place them under the new unified jurisdiction of the UPC, this will most likely be decided on a patent-by-patent basis.

The main arguments in favor of the UPC (and thus against opting out) are the cross-border enforcement and the uniform language in several countries. Of course, at least at the start, the UPC will be unchartered territory and for those who prefer a high level of predictability and certainty, or simply value the high quality offered by, e.g. German, national proceedings, opting out is certainly worth considering.

Whatever you decide, you can count on a high level of expertise, especially at the national courts or UPC divisions in Germany, where you can enforce your patents with legal certainty in the event of a dispute.

Unitary Patent

Unified Patent Court