Opt-out

With the entry into force of the Agreement on a Unified Patent Court (UPCA), the Unified Patent Court will have jurisdiction over actions for infringement or invalidity of classical bundle patents and a new Unitary Patent.

However, actions for infringement or for invalidity of a European bundle patent can be brought before the national courts as before during a transitional period of 7 years from the start of the Unified Patent Court Agreement, which can be extended to a further 14 years.

Until one month before the end of this transitional period, the jurisdiction of the Unified Patent Court can be explicitly excluded for European bundle patents granted or filed before the start of the UPC or during the transitional period (so-called “opt-out”). In this case, the European bundle patent will be judicially treated like a classical bundle patent. The exclusion applies for the entire lifetime of the European patent and from the date of entry in the Unified Patent Register.

Thus, owners have the possibility to withdraw a classical bundle patent or a European patent application from the access of the new Unitary Patent System by an opt-out.

In order to declare the exclusion of a classical bundle patent or a European patent application, a corresponding communication must be submitted to the registry of the Unified Patent Court via the so-called “case magagement system”. The communication can even be filed before the Unified Patent Convention enters into force in the so-called “sunrise period”. The sunrise period lasts until May 31, 2023. In this way, a bundle patent or a European patent application can be excluded from the Unitary Patent System even before the start of the Unitary Patent System.

The proprietor can withdraw from the exclusion of general jurisdiction at any time and make the European bundle patent accessible to the new patent system again (so-called “opt-in”).

The condition for an exclusion of a European bundle patent from the Unitary Patent System is that no action has yet been brought before the Unified Patent Court. Against this background, it may be advisable for owners of classical bundle patents to withdraw bundle patents from the new Unitary Patent System already during the sunrise period by an opt-out. If an action is to be brought before the Unified Patent Court at a later date, the owners can withdraw from an opt-out at any time by means of an opt-in.

We will be happy to provide you with customized advice on the strategic options!