The newly established Unified Patent Court will eventually have exclusive jurisdiction over both classic European Patents and Unitary Patents.
However, in the case of classic European Patents it will be possible for a limited time to opt out of the jurisdiction of the Unified Patent Court.
This limited time period will be for an initial period of seven years, but there is scope for this to be extended once by a further seven years.
In order to opt out of the UPC system, a specific request must be filed.
It is highly advantageous to opt out before the new system comes into force – there will be a “sunrise” period where opt-outs can be filed in advance of the new system coming into force.
This is a highly strategic question without a simple “right” or “wrong” answer. Broadly speaking, your decision will depend upon your IP strategy and whether you are maintaining your patents for offensive or defensive purposes.
A basic concept of the UPC is that a single action will be effective for all of the relevant territories.
This means that if you own a patent and it is attacked and revoked, then a single court action can revoke your entire patent in all countries.
On the other hand, if you are enforcing your patent rights you have the advantage that a single action can be effective in a larger number of countries. These considerations also apply in commercial negotiations and licensing discussions.
Changing Your Mind
After you have opted out, you can withdraw the opt-out in order to bring your patent back under the jurisdiction of the UPC.
However, you can only do this once; it will not be possible to opt-out again for a second time.
Information accurate as of 27/02/2023
At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!