§. Who can lodge the applications to opt-out / withdraw an opt-out / correct an opt-out and how?
- According to the Rule of Procedure 5 of the Unified Patent Court: the patent proprietor or a person mandated by her are the only persons allowed to opt-out, withdraw and correct an opt-out. In case of multiple patent proprietors, the opt-out must be lodged by or on behalf of all proprietors.
- Opt-out on behalf of the sole patent proprietor: If the authorised user is a representative before the UPC, as defined in article 48 of the UPC Agreement, a mandate authorising the opt-out is not required. If the user is not such a representative, a mandate from the proprietor – and, if applicable, holder of Supplementary Protection Certificates- must also be lodged. This mandate must specifically authorise the opt-out. The mandate can be delivered to any person or private company. It must include the patent number, the patent holder’s name and her signature. The UPC published a template mandate which can be found below.
- Opt-out on behalf of multiple proprietors:
- The opt-out may be lodged on behalf of a proprietor by a registered user of the CMS. The user must be authorised to lodge the opt-out by all proprietors. She must declare in the opt-out that each proprietor is entitled to be registered as proprietor pursuant to Rule of Procedure 8.5.
- If the authorised user is a representative before the UPC, in accordance with article 48 of the UPC Agreement, a mandate authorising the opt-out is not required. If the user is not such a representative a mandate from all proprietors and holders of SPCs must also be lodged specifically authorising the opt-out in question.
The mandate template for lodging an application is available on the UPC Case Management System and can be found below:
§. What if Supplementary Protection Certificates (SPCs) have been granted in respect of the patent being opted-out?
§. What are the different procedures?
1. Opt-out procedure:
The opt-out procedure must be completed online by logging into the UPC Case Management System. This is a 9 steps process:
All opt-out requests will appear on the EPO Register. All European patents opted out will be published on the UPC website.
It is not possible to opt out a European patent with unitary effect. Therefore if the application for opting-out a European patent with unitary effect is granted, the opt-out is deemed to be withdrawn from the date of grant. It is also not possible to opt out any patent/SPC which is the subject of an existing or prior action before the UPC.
2. Correction of the opt-out procedure:
3. Withdrawal of the opt-out:
§. When will the opt-out take effect?
§. How much will it cost to opt-out?
The Preparatory Committee confirmed that there will be no fee for the opt-in nor opt-out procedure.