20/03/2023
Now that the Unified Patent Court “sunrise period” has begun, proprietors of granted European patents who do not want these to be subject to the jurisdiction of the UPC have begun to opt out their granted patents.
It is possible to opt out of a number of existing rights together, and this can greatly reduce the costs and administrative burden for opting out compared to individual opt outs for each right.
The question therefore arises whether proprietors who have decided to opt out of the jurisdiction of the UPC for their granted patents should opt out at the same time for their pending, published, European patent applications.
Proprietors who have decided that they do not wish their granted European patents to be subject to the jurisdiction of the UPC, and therefore have decided to opt out their granted patents, will probably also wish to opt out any pending applications. In that case, opting out pending applications at the same time as opting out granted patents is likely to reduce the administrative burden and cost compared to opting out individual European applications at a later stage. Also, opting out applications during the sunrise period ensures that the opt out is filed before any action can be bought before the UPC in respect of the application which would preclude a later opt out.
However, owners of European applications and granted patents should be aware that once an opt out has been filed, it will not be possible to withdraw the opt out in the future if there are, or have been, any national actions brought in respect of the application or patent. If the opt out cannot be withdrawn, it will not be possible to use the UPC in the future. Further, it is only possible to opt out for an application once, and so if an opt out is filed and the opt out is then withdrawn, it will not be possible to opt out again.
If no action is brought before the UPC in respect of a pending European patent application, it will be possible to file an opt out request prior to the grant of the European patent at any time during the seven year transitional period of the UPC. This opt out will take effect for the remaining life of the application and any patent granted on the application. As there are very few actions that could be brought in respect of a pending application before the UPC, it is unlikely that there will be such an action which could prevent applicants opting out their pending applications. Therefore, if owners of pending applications are unsure whether to opt out of the jurisdiction of the UPC, it will generally be safe to defer the opt out until closer to the end of the transitional period or the grant of the patent (whichever comes sooner). However, applicants should be aware that the right to opt out would be lost if an action was brought before the UPC before an opt out request was filed.
We therefore think that if proprietors have made a decision that they do wish to opt out of the jurisdiction of the UPC that it is procedurally easiest and most cost efficient to opt out of pending applications at the same time as granted patents. However, if owners of pending patent applications wish to defer the decision on opting out, it is likely to be possible in most cases to file an opt out request at any time prior to the grant of a European patent during the transition period, although this cannot be guaranteed.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
