your expert

for UP & UPC

Urgent: SHOULD you consider opting out of upc?

The Unified Patent Court (UPC) is a new, common court that is being established. It will have jurisdiction over European patents and will deal with patent litigations for all member states of the Unified Patent Court Agreement (UPCA). The UPC will take a decision that has effect in all the member states. This is different from the current situation where you have to litigate in every country separatly and you might have different outcomes in different countries. 

Possible litigations: someone infringes your patent and you will attack him, you infringe someone else’s patent and you are being attacked, you want to prove you don’t infringe or that someone else’s patent is not valid.

The UPC sure has multiple advantages:

  • it provides uniform protection across all UPCA-member states;
  • one single, specialised court that decides in case of litigations, it deals with nothing but IP matters;
  • your litigation case is dealt with in one single procedural language, ever so easy;
  • procedures will be very short, you should have a decision within 12 months.

Potential downsidesof UPC may however be: 

  • if someone attacks your patent for validity, it may be nullified for all the countries at once;
  • if the UPC decides you infringe a patent, you do so in all UPC-member states at once. 

In the future, standard procedure will be that UPC deals with all validations.
Unitary protection can only be obtained as from the entry into force of UP and UPC for patents that are granted after this entry into force. It might seem merely a system for the (near) future. However, this common court will also deal with (potential) infringement cases on patents that have already been granted before the entry into force. It also holds for your bundle patent that has already been granted which means it is not only a system for the future, but also for the past.

Unless  you say “I don’t want this! I have never asked this, I don’t want the UPC to deal with my validations as if they were a UP”.  In this case you opt-out, that is the terminology that is used: you can opt-out from the jurisdiction of the UPCIn that case, individual national courts will deal with a (potential) court case.

You have to weigh many factors and the decision process might be pretty difficult.

There are some questions you should try to answer, keeping in mind your IP strategy, your patent, its value and the UPC-member state(s) where it is currently valid. 

1. Do you care about court cases? In terms of attacking there is no big difference but the opposite is true for defending a potential case!
2. What is the current geographic coverageof your patent? Does it cover only one UPC-member state or more?
3. Does this/these country(ies) have a strong patent court?
4. Do you have the budgetfor more than one potential court case?
5. Could your patent be legally weakor do you consider it legally strong?

The decision to opt-out cannot be taken straight forward. We prepared a decision tree that might help you, please feel free to use it. 

In case of any doubt, don't hesitate to contact our office. It is a very important decision with long-term and potentially major consequences. Our patent experts are happy to assist you with a portfolio analysis.

Your patent expert screens your European Patent portfolio. Each patent is examined for its necessity/desirability to fall under the jurisdiction of the Unified Patent Court.
Our experts know what aspects to take into account in order for you to obtain and retain the best suitable protection. 

Please note that DenK iP is an official service provider for KMO-portefeuille (SME e-wallet) and that portfolio analysis is a type of IP advice that can be funded  by this Flemish support measure. 

 

 

If you want to opt-out, you should take action!

When you don't take any action, your European patent, that has been granted in the past, will be opted in by default. This means that the UPC and national courts have jurisdiction over your patent, as from the start of the unitary system(at least during the transitional period, being at least the first seven years of the UPC system). That's the easy part. 
However, there is a considerable 'but' to the story when your patent would become subject to litigation. 

If a court case is started before the UPC, then you get a single court case and whatever decision is made, holds for your patent in all the UPC member states. However, your opponent can also choose to litigate in front of national courts. This means you might get several court cases and possibly diverging decisions.

In the past, when you validated your European patent, you got a bundle of national patents, never anticipating on them being attacked at once. At the moment of grant, you have never chosen that this would be the case.

That is why we believe it is important to start reviewing your IP portfolio and decide whether or not to opt-out, for every European patent individually.

As a licenseeyou will not be able to submit an opt-out declaration, not even as an exclusive licensee. The licensee should discuss his or her preference to opt-out with the patentee. The opt-out action can only be initiated by the patent proprietor. 

As co-owners, you can only opt-out in agreement with the other co-owners. You should start to prepare in time as you will need a jointly signed authorization for the person submitting the opt-out declaration. 

The possibility to opt-out is given as from the start of UPC, during a transitional period of at least 7 years. It can be done after grant but also during the application procedure, as from publication.

The request for opting out will be dealt with by the registry and the application will be entered in the register “as soon as practicable”. This means there will probably elapse some time between filing the request and the effective date of the opting out action. As this system is not active yet, we don’t know how much time this might take but please note that in this time between your request and the effective date, you may get attacked which will make your opting out request ineffective.

That's why there is the sunrise period: a period of 3 months before the start of UPC. During this period, you can opt-out making sure your opting out request is effective as from day one of the system.

There is no official fee to be paid when opting out. Opting out is an administrative step that should be taken by the proprietor or his representative.

The administrative cost will depend on the size of your IP portfolio and the number of patent(s) (application(s)) to opt-out. Please contact us to prepare a dedicated cost estimate for your portfolio.

Your patent is pinned into a system (UPC or non-UPC) once a court case against your patent has started.

Let us give some examples:

  • Suppose you opt-out because you’re not really sure what might happen. You still have the chance to opt-in again unless a national court case has started already.
  • The same holds for the other option: suppose you decide not to take action (you opt-in) and a court case has started in front of the UPC, you don't have the chance to opt-out anymore.

This means that the start of a court case can pin you (your patent) in the system you (your patent) are (is) in at that moment in time.

Answers TO all your UP questions!

The European patent with unitary effect, which in brief is called the Unitary Patent, that holds for different countries, provides uniform protection across all the countries that are party to the unitary patent system.

The new system is somewhat different from what we know now: a single procedure (filing your application, receiving the search report, requesting examination) up to grant and then you have to decide: either you go for a bundle patent and validate for every desired country or you go for a European patent with unitary effect. In the latter case, there is one single step to take to do the validation

The currently known European patent is a European bundle patent. In order to obtain it, you go to a single procedure for a plurality of countries (a bundle of countries, part of the European patent convention). Then, after grant, your European patent splits in a bundle of national patents. At the moment of grant you decide where to validate your European patent. These validations have to be done separately in the different countries (with different requirements) and your European patent becomes a bundle of national patents that have to be policed in every country.

Yes, there are two options having the same result.

You can delay the grant, in order to be able to go for unitary protection:

  • By not accepting the text as intended for grant
  • By officially requesting the delay (only possible as from the start of the sunirse periode), while still agreeing with the text as intended for grant (R71(3) EPC).

No, both systems exist aside each other. In future, when the system goes life, you will be able to select a bundle patent, a UP or a combination of both.

This means you have to choose, at the time of grant:

  1. You go for a bundle patentand take validation actions in every country seperatly: the countries of this bundle are opted in (if they form part of the UPCA) but can be opted out; 
  2. You go for unitary patent, this UP is always opted in, you can not opt-out. In one single step you get protection in all countries that, in that moment in time, are party to the unitary patent system; or
  3. You go for a combination of both: UP and on top of that, you want to obtain protection in a country not covered by UP: the UP part is opted-in, for the other part you can select the countries to opt-in and those to opt-out, depending on your needs and wishes.

Please note that double protection is not possible: if you go for UP you cannot combine this with individual protection in a UPCA-member states. 

Unitary Patent protection will be possible in all EU-member states that have chosen to be part of the UP system and that have ratified the Unified Patent Court Agreement (UPCA). This means Unitary Patent protection will never be possible in non-EU member states (like Switzerland, United Kingdom and Turkey) and also not in countries that have decided not to enter the UP system and/or decided not to ratify the UPCA (Spain, Poland, Croatia and Hungary). 

You can get protection in 38 EU-member states via the European patent as we know it now (left map, red countries). 

The current scope of the UP is 17 UPC-member states (middlemap). Up until now, these European countries have ratified theUP agreement and UPCA. 
Ultimately, unitary patent protection might become available in up to 23 countries, if every country that is able to, has ratified (right map).

If you take a close look at the maps (and you have some math skills), you see that there will always be countries that are not covered by the UP (hence the combination of UP and bundle patent, see Q&A)

The scope of your UP will depend on the moment of validation. 
The list of countries covered by your unitary patent ( i.e. the geographical scope of your UP) will remain fixed throughout its life, regardless of the countries that ratify the UPCA after your unitary patent has been granted. 
In other words, because this is important: the number of countries party to the UP-system can change throughout the life span of your patent, but the scope of the protection is decided at the moment of grant. 

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