What is the Unified Patent Court (UPC)?
The Unified Patent Court is a new international court for patent litigation. You can find out more about the UPC here.
The UPC will have jurisdiction over several European Union (EU) countries, such as France and Germany, but not all European Patent Convention (EPC) member states. For example, the UK, Switzerland and Spain will not fall under the jurisdiction of the UPC. Find out more here.
Can I opt out from the Unified Patent Court (UPC)?
Traditional non-unitary patents and pending European applications can be opted out of the UPC from the start of the sunrise period (commencing on 1 March 2023) until 1 month before the end of the transitional period (which will last for at least 7 years).
Unitary patents fall under the jurisdiction of the UPC and cannot be opted out.
No opt out is possible once an action has been brought before the UPC.
A patent can only be opted out once.
What is the effect of opting out of the Unified Patent Court (UPC)?
If your patent has been opted out, it must be enforced on a national basis.
The opt out will apply to all designated states and will last for the lifetime of a patent.
For pharmaceutical patents, any Supplementary Protection Certificates (SPCs) for opted out EPs will automatically be opted out.
When can I opt out?
Your granted European patent, or pending European application, can be opted out of the UPC:
- during the “sunrise period” (starting on 1 March 2023); or
- from 1 June 2023 (when the UPC becomes operational) until 1 month before the end of the transitional period (expected to be at least seven years), provided that no action has been brought before the UPC.
How can I opt out?
Opting out is possible via the UPC case management system.
Note that in order to avoid an invalid opt out, the instructions for opting out must originate from the entitled proprietor (which may not be the same as the proprietor recorded on a national register of patents).
For patents and patent applications with multiple owners, all of the owners need to opt out together.
What if I change my mind?
It will be possible to subsequently opt back in at any moment, provided that no action has been brought before a national court.
If no opt out has been requested previously, an opt out can be requested from 1 March 2023 and at the latest one month before expiry of the transitional period. A patent can only be opted out once. Therefore, if a patent has previously been opted out and then opted back in, no further opt out is possible.
No opt out is possible if an action has been brought before the UPC.
Want to know more?
Register for our webinar
Join Senior Associate, Dr. Serena White as she outlines throughout the webinar:
- What the law changes are and what they mean for Australian and New Zealand businesses and individuals with European patents and patent applications;
- The advantages and disadvantages;
- The benefits and risks; and
- What Australian and New Zealand businesses and individuals need to do to prepare.
Discover more about the unitary patent and UPC here.
We welcome queries from our Australian and New Zealand clients regarding the unitary patent and the UPC. We would be happy to discuss what these changes mean for you and assist you with managing your IP portfolio in view of the changes.
Disclaimer
This article is intended to provide general advice. Deciding if unitary patent protection is the right choice and whether or not to opt out a European patent or patent application from the UPC are commercial decisions which will depend on the specific circumstances.