Information on opting out of the UPC

While owners of unitary patents have no choice of court, proprietors of existing European patents or holders of Supplementary Protection Certificates (SPCs) may choose to have their case heard by the UPC or by a national court. This is also true for third parties bringing proceedings against the validity of an existing European patent or SPC. This results in a situation where an existing European patent or SPC can be revoked for all UPC countries in a single court action. This risk is fully removed when a so-called “opt-out” request is filed with the UPC. An opt-out is also available for published European patent applications. If it is believed that centralized legal proceedings before the UPC are disadvantageous for your patent position compared to the current system of legal proceedings in individual countries, you can choose to submit an opt-out request with the UPC. In that case, nothing will change and legal proceedings on those patents, published applications and SPCs will still be heard by the national courts.

In principle, you can submit an opt-out request at any time during the lifetime of a European patent. However, as soon as the UPC starts, third parties can institute legal proceedings in the UPC in respect of the European patent, the published application or the SPC. If that happens, an opt-out is no longer possible. If you do not want the patent to fall under the jurisdiction of the UPC, it is recommended to submit an opt-out request before 1 June 2023.

After an opt-out, you will have a single opportunity to withdraw the opt-out. The patent will then (again) be subject to centralized legal proceedings before the UPC. Also, in this case, legal proceedings in respect of the patent brought before a national court will prevent opting-in with the UPC.

A valid opt-out request can only be made on behalf of all actual patent proprietors, applicants or SPC holders, i.e. only on behalf of the “true owner(s)”. Incomplete or incorrect information can render the opt-out invalid. As a client of V.O. you may have received on overview of patents and patent applications that can be opted-out. The overview lists the patent proprietors/applicants/holders as they are recorded in our databases. Should ownership have changed, for instance as a result of an assignment after grant of the patent, our records may no longer be up-to-date. When you are desirous to file an opt-out, it is vital that the ownership information is complete and correct. If an overview of patents and patent applications has been provided to you, this overview must be cross-checked. Please inform us immediately if our record does not reflect the current true owner(s). For instance, again in case of an assignment, when the new owner (assignee) is not registered in the patent registers, the opt-out request must still be made on behalf of the assignee in order to be valid, but since it is presumed by the Court that the person shown in the patent registers is entitled to request the opt-out, a declaration of entitlement must then be lodged if the register information is not current, and we urge you to inform us thereof.

If V.O. is instructed to file an opt-out request, we will presume that those instructions are provided by the true owner and on behalf of all true owners, as the case may be, and we shall declare so in the opt-out request. If you are not the sole proprietor/ applicant, we recommend that you request a mandate and keep that as evidence that you are authorized to instruct V.O. on behalf of all proprietors/applicants.

Consent of licensees is not required for opting-out a patent or application. Licensees cannot file an opt-out request. But a holder of an exclusive license can bring actions before the UPC, unless the licensing agreement provides otherwise or an opt-out is in place.

If you are the holder of an SPC, and you wish to opt-out the SPC, you are requested to provide the number of the basic patent and the SPC Grant number.

There is no Official fee for filing an opt-out request. V.O.’s service fee for submitting or withdrawing an opt-out request is €265 per patent, for the applications and patents in the overview provided to you. This fee is exclusive of any urgency fees or recordings of changes in names or addresses of proprietors/applicants/holders and does not include a review of the correctness of the information contained in the overview. If a simultaneous opt-out request for more than 10 patents is to be filed, please contact our Business Support Department or one of our Patent Attorneys for the applicable discounted service fee. Orders arriving after 14 May 2023, for opt-outs taking effect on 1 June 2023, are subject to urgency fees. Please note that V.O. will perform reasonable best efforts to file the opt-out request before 1 June 2023 using the automated online system (API) offered by the UPC if instructions are received prior to 14 May 2023 and these instructions can be carried out on an “as is” basis. In case of unavailability of the API system of the UPC, V.O. will file the request as soon as possible once availability of the API system is restored.

On https://www.vo.eu/vo-patents-trademarks/up-upc/ you will find more information and frequently asked questions about the Unified Patent Court and the unitary patent. Of course you can always contact your patent attorney or call us via +31 70 416 67 11.