A. What is the Competence of the UPC

The Unified Patent Court (UPC) is scheduled to come into existence in late 2022 at the same time as the new Unitary Patent. As soon as the UPC has come into force, the applicant of a European patent application for which the EPO issues an “Intention to Grant”-notification, will have the choice of claiming unitary effect (Unitary Patent) or choosing a bundle of national EPC states (conventional European Patent). For any new Unitary Patent, the UPC will have sole jurisdiction, i. e. the UPC will be exclusively competent for any action for infringement or for revocation of a Unitary Patent. The same will also apply to conventional European patents (bundle patents) having no unitary effect in the future. However, during a transition period of 7 years, a European patent bundle can be litigated either in the U PC or the national courts at the choice of the party that starts the litigation (owner or third party). For the avoidance of doubt, the UPC will never have jurisdiction over parts of the European patent bundle that are outside the UPC zone, such as Swiss, British or Spanish parts of the European patent bundle. The UPC can only have jurisdiction over UPC zone validations, e.g. in Germany, France, ltaly and the Netherlands.

B. What is the Transition Period?

During a transition period of 7 years, an action for infringement or for revocation of a conventional European patent (bundle patent) may be brought either before the UPC or before national courts. 

For revocation, in example, this means a third party can start a central revocation action at the UPC against a European patent bundle or, alternatively, start a national revocation action in one country at his own discretion. Once litigation starts, then the jurisdiction for the European patent bundle is fixed. 

C. What is an Opt-Out?

The above-mentioned choice between the U PC and national courts is available as long the competence of the UPC is not opted-out. Once opted-out, the UPC route is closed and the European patent can only be litigated in the national courts (which is the existing situation). So, for any conventional European patent – also the ones that are already granted – litigation before the UPC can be prevented by registering an “opt-out” request at the Unified Patent Court. 

lf no action is taken, i. e. no opt-out is filed, the default position is that, starting on the day the new system comes into effect, existing and new European patents (bundle patents) will be litigable at either the new Unified Patent Court or national courts. 

D. Should I File an Opt-Out Request or Take No Action?

The option to Opt-Out the UPC for conventional European patents was primarily introduced to relieve the UPC of too much work in the early stage and to give it time to develop the necessary routines. 

We assume that the UPC will be able to properly carry out its tasks and issue comprehensible verdicts in a reasonable time. Further, litigation before a single court (the UPC) will certainly be much easier and more cost-effective than bringing several legal actions before national courts in different languages. So, we recommend observing the UPC’s work and to take no action at the beginning. Should it, however, turn out that the UPC does its work insufficiently or requires too much time to make a decision, then the UPC can still be opted out. 

Please note that an opt-out can be vvithdrawn, thereby re-enabling use of the UPC. Once an opt­out is vvithdrawn it is not possible to opt-out the same European patent bundle again. 

E. When Should I File an Opt-Out Request?

For any existing European patent, please let us have your instructions on whether an opt-out shall be requested before end of July 2022. lf we do not hear from you until then, we will take no action. 

For all future granted European patents (bundle patents), please let us know whether an opt-out shall be requested upon receipt of the “intention to grant” notification from the EPO. We will remind of this in our corresponding grant report. 

In case of questions, please do not hesitate to contact us.