The Preparatory Committee published an update on Article 83 of the UPCA and the possibility of opting out. As a reminder, Article 83 states that:
“(1) During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.
(2) An action pending before a national court at the end of the transitional period shall not be affected by the expiry of this period.
(3) Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.
(4) Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.
(5) Five years after the entry into force of this Agreement, the Administrative Committee shall carry out a broad consultation with the users of the patent system and a survey on the number of European patents and supplementary protection certificates issued for products protected by European patents with respect to which actions for infringement or for revocation or declaration of invalidity are still brought before the national courts pursuant to paragraph 1, the reasons for this and the implications thereof. On the basis of this consultation and an opinion of the Court, the Administrative Committee may decide to prolong the transitional period by up to seven years.”
The Q&A of the Unified Patent Court’s website clarifies the provisions contained in article 83(1) and 83(3), and looks at whether Article 83 affects the exclusivity of the UPC’s jurisdiction and the duration of an opt-out.
What does the Preparatory Committee say about Article 83 and the exclusivity of jurisdiction?
The issue was whether Article 83 only concerned the exclusive jurisdiction of the UPC with the consequence that after the opt out the UPC would share its competence with national courts, or whether Article 83 should be read as totally removing the UPC’s competence once the patent was opted-out.
The Preparatory Committee makes clear that the intention of the legislator is that Article 83 gives the opportunity to patentees to remove their patents entirely from the jurisdiction of the UPC. Therefore once the patent has been opted out, the parties only choice of forum will be national courts.
And what about the duration of the opt-out?
This was the second main issue about opt-outs. In fact with the present drafting of Article 83 (1) it is difficult to know whether the opt-out from the jurisdiction of the UPC for a classic European patent is only effective during the transitional period or whether, once it has been notified during the transitional period, it is effective for the whole life of the patent.
The Preparatory Committee states in unequivocal terms in the Q&A that the opt-out is valid for the whole life of the patent rather than just for the transitional period. Therefore the transitional period only corresponds to a period of time during which patentees have the possibility to either bring their actions for infringement or revocation before national courts, or decide to opt-out of the UPC so that their patents are only under the jurisdiction of national courts. The transitional period consequently does not impact the length of the opt-out but determines when the opt-out can take place, i.e. within the seven years (more if prolonged) set out by the UPCA.
See our post on the Transitional period and the Opt-out here.