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Unified Patent Court: why opt out?

Published in: Intellectual Property
by Arlo Canella
Home > Unified Patent Court: why opt out?

The Unified Patent Court and the Unitary Patent are about to launch in 17 European countries, giving patent owners the option to obtain uniform protection in several jurisdictions (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden). This article provides an overview of when and how to request opt-out or opt-in, as well as useful tips for planning how to manage your patent portfolio under this new jurisdictional option.

What are the advantages and disadvantages of opting out?

The opt-out choice by holders of granted European patents has advantages and disadvantages. Opting out means that national jurisdiction can be retained for European patents that have already been granted or are in the process of being granted. This means that in the event of disputes concerning the patent, they will be handled by the relevant national court rather than the Unified Patent Court.

The advantages of opting out are mainly the possibility of dealing with national courts that are already familiar and familiar with national laws, as well as the reduction of legal costs in case of litigation, since national courts tend to have lower costs than the Unified Patent Court.

However, patent owners should also consider the disadvantages of opting out, including the loss of the advantages offered by the Unified Patent Court, such as the possibility of obtaining uniform decisions on European patents in different countries and the effectiveness of judgments issued by that court.

It is also possible that opting out could create uncertainty for competitors, as European patents that exclude the jurisdiction of the Unified Patent Court could be subject to different jurisdictions depending on the country in which the patent protection is invoked.

To assess whether opting out is convenient for one’s situation, one should consider the costs and benefits of the two options, as well as the long-term IP strategy.

What are the deadlines and ways to request opt-out?

The “Sunrise” began on March 1, 2023, allowing holders of granted European patents to apply to opt out of the jurisdiction of the Unified Patent Court.

During the “Transitional period,” which lasts 7 years from June 1, 2023, holders of European patents or European patent applications can request to opt out provided there are no pending proceedings. The request can be made through a standard form available on the Unified Patent Court website.

The opt-out request must be submitted by the patent owner or his legal representative, but before submitting an opt-out request, it is important to carefully weigh the advantages and disadvantages of opting out, considering one’s specific situation. It is also essential to verify that there are no pending proceedings before any national court for the patent in question.

Following an opt-out request, it is still possible to bring a European patent back under the jurisdiction of the Unified Patent Court, again provided there are no pending proceedings.

The request for reentry can be made using a form similar to the one used for the opt-out request. There are no out-of-pocket costs associated with opt-out or opt-in requests.

In what situations might it be appropriate to request opt-out or opt-in?

Opting out could be beneficial to patent owners who prefer to retain protection of their patent rights under national jurisdiction. It might be appropriate to request an opt-out, for instance, if the patentee has reason to believe that the Unified Patent Court may be less inclined than the national courts to protect his or her patent rights.

Furthermore, since the Unified Patent Court is for all intents and purposes in its first trial and may be less efficient or more costly than the national courts, if the patentee is risk averse, it may be advisable to request an opt-out.

Regarding opting back into the jurisdiction of the Unified Patent Court, should there be a renewed desire for uniform protection, for example, if the patentee is likely to believe that there might be divergence among national courts on the validity of the patent or the extent of infringement, opting back into the jurisdiction of the Unified Patent Court might be the most appropriate choice.

As a general rule, the decision to request opt-out or opt-in to the jurisdiction of the Unified Patent Court will depend on the specific circumstances of the case and the preferences of the patent owner. In any case, it is important to plan the management of one’s patent portfolio bearing in mind this new jurisdictional option and carefully weigh the advantages and disadvantages of both choices.

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Publication date: 7 April 2023
Last update: 7 September 2023
Avv. Arlo Cannela

Avvocato Arlo Canella

Managing Partner of Canella Camaiora Law Firm, member of the Milan Bar Association, passionate about Branding, Communication and Design.
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