The Transitional Period and the Opt-out

Written by Louise AMAR 5 May 2014

Supplementary Protection Certificate

 

I. The transitional period:

The UPC Agreement provides for a transitional period of seven years, which may be prolonged up to a further seven years by the Administrative Committee on the basis of a broad consultation with the users of the patent system and an opinion of the Court.

During the transitional period the following options will be possible regarding European patents without unitary effect:

 

  • · A proprietor of – or an applicant for – a European patent granted or applied for prior to the end of the transitional period will have the possibility to opt out the patent/application, unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into the register. It will be possible to withdraw such an opt-out at any time as stated in Article 83.3 of the UPC Agreement

 

There will be no possibility to opt-out a European patent with unitary effect.

 

 

II. The Opt-out system in details:

 

(A) The opt-out system and its relationship with the European Patent and the European Patent with Unitary Effect:

  • The Opt-out and the European bundled patent:

Pursuant to Article 83.3 of the UPC Agreement the possibility to opt out concerns a European patent granted or applied for before the end of the transitional period. That means that the opt-out once notified and registered takes effect for the entire European bundled patent for all Contracting Member States where this patent has been validated. There is no need to notify the opt-out separately for the relevant Contracting Member States.

  • The unity of application and the Opt-out system:

The unity of an application and of the patent, in case of several applicants or several proprietors, is a basic principle of patent law as reflected in particular in Article 118 of the European Patent Convention. This means that applicants or proprietors of one single application for a European patent or one single European patent will have to act in common to exercise the opt-out.

  • The Opt-out and the UPC’s jurisdiction:

Once an opt-out has been notified and registered the UPC does not have any jurisdiction any more with respect to the European patent or the application for the European patent concerned. The patent or application will be subject only to the jurisdiction of the competent national courts.

  • The Opt-out system, the European patent and the European patent with unitary effect:

If an opt-out has been notified and registered with respect for an application for a European patent, the opt-out continues to apply to the relevant European patent, once granted. An opt-out once notified and registered normally remains in force for the entire life-time of a European patent, unless the proprietor withdraws the opt-out pursuant to Article 83.4 of the UPC-agreement.

 

(B) Registration of Opt-out by the UPC’s Registry:

  1. Opting-out fee:

The Contracting Member States in the Preparatory Committee have not yet decided if there will be an opting-out fee.

       2.Registration of the opt-out:

In the interest of legal certainty for both the proprietor or applicant and third parties, it will indeed be important that the opt-out is entered into the Registry and becomes effective on the day the notification of the opt-out is received by the Registry. The Contracting Member States and the Preparatory Committee do still have to look into the necessary arrangements to achieve this.

 

(C) Opt-out and the choice of forum during the transitional period:

Pursuant to Article 83.1 of the UPC Agreement during an initial period of seven years after the entry into force of the UPC Agreement any proprietor of a European patent or any applicant can initiate proceedings, in particular infringement proceedings, before national courts, regardless of whether the European patent or application concerned has been the subject of an opt-out.

But will it be possible to initiate a revocation action in the UPC if someone else has already initiated an infringement action before the national courts? It will normally be possible for a party to initiate a revocation action before the UPC even if the proprietor of the European patent has initiated an infringement action before a national court. If the proprietor of the European patent wants to avoid a revocation action before the UPC he needs to make use of the possibility to opt-out from the jurisdiction of the UPC.

 


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