Your European patent: file an opt-out or not?
When the unitary patent and the Unified Patent Court (UPC) come into force on June 1 this year, all European patents can be involved in enforcement proceedings before this new European Patent Court. This court will then decide enforcement measures and invalidity proceedings in all 17 EU countries at once. This presents holders of an existing European patent portfolio with a choice: to file an opt-out or not? Peter de Lange and Frits Schut, patent attorneys at V.O., explain.
Unified Patent Court: also for existing patents
From June 1, 2023, the UPC decides not only on new unitary patents, but also on existing European patents already granted before June 1, 2023, and on European patents validated as classical European patents after June 1, 2023. Thus, the UPC decides, in principle, on all European patents. If the UPC rules that a patent is invalid, it will apply to all 17 EU countries that recognize the UPC, including the Netherlands, Germany and France. De Lange: "Because this is a drastic change, there is a transitional arrangement: patent holders can file an opt-out for their patent. For a patent with an opt-out, nothing changes and only the national courts decide on infringement and validity of that patent." An opt-out is not possible for a unitary patent.
'Initially we thought participating in the UPC system with our portfolio was a good idea, but on reflection the risks don't seem to outweigh the benefits – so we are choosing an opt-out for now'
Submit an opt-out for existing patents?
"Opt-outs can now be submitted at least until 2030, for both existing and future European patents and applications. However, if a competitor starts proceedings against the patent at the UPC after June 1 of this year, an opt-out is no longer possible," De Lange said. "All patent holders would therefore do well to consider this before June 1. The patent attorneys at V.O. are happy to provide advice on this."
Whether an opt-out is the best choice for a European patent depends on many factors. Schut: "Perhaps the most important is the balance between the ability to act quickly against infringers in multiple countries and the risk that the patent will be declared invalid all at once." On the other hand, you are not stuck with an opt-out. "The patent can still be brought under the jurisdiction of the UPC in the second instance with a so-called 'opt-in' unless proceedings are pending in a national court."
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