End of Unified Patent Court "Sunrise Period" but Opting-out is Still Possible
The three-month “sunrise period”, during which any European patent application/patent could be “opted out” of the exclusive competence of the Unified Patent Court (UPC) in advance to prevent a central revocation action, has ended on May 31, 2023, one day before the start of operation of the UPC.
Indeed, the UPC started receiving cases on June 1, 2023. However, applicants/proprietors may still opt out their European patent applications/patents of the UPC jurisdiction, at least during a transitional period of 7 years, provided no action has already been brought before the UPC. The transitional period could be extended once by an additional period of 7 years. After the transitional period, the UPC will be competent to hear cases both on European patents with unitary effect and on European patents and opting-out European patents/patent applications of the competence of the UPC will not be possible.
Particular attention should be paid to cases in which a transfer of rights has been executed but not registered before the European Patent Office (EPO) or before the national patent Offices where the European patent has been validated, and to cases having multiple applicants/proprietors. A review of ownership is recommended to avoid an invalid opt-out because the opt-out request must originate from the entitled applicant/proprietor, be it registered or not before the EPO or a national patent office. Additionally, co-applicants/co-owners should all agree on opting-out before filing an opt-out request because the request is made by or on behalf of all co-applicants/co-owners.
The Rules of Procedure require a European publication number. This means that opting-out is not possible in the case of a published PCT application to which no European publication number has been assigned yet. Accordingly, an opt-out may be requested, at the earliest, once the Communication of European publication number is notified to the applicant or its representative.
Whenever simultaneous protection is sought based on a European patent and on a national patent (e.g., the priority of the European patent), opt-out should be avoided in some cases because some states, such as for example France and Germany, prohibit simultaneous protection by a national (e.g., French or German) patent and an opted-out European patent.
An opt-out can be withdrawn, thus resulting in an opt-in, at any time, provided no action has already been brought before a national court. However, once an opt-out has been withdrawn, it is no longer possible to request a further opt-out.
While each opt-out effected during the sunrise period was immediately recorded but came into effect on June 1, 2023, both an opt-out and its withdrawal are now immediately effective upon registration. The UPC Registry performs no examination of opt-out requests. Any irregularity may be instead assessed by the UPC during an action before the UPC. In such a case, if the UPC determines that the opt-out is not valid, it will no longer be possible to request an opt-out due to the prohibition of opting out a European patent once an action has already been brought before the UPC.
Now that the UPC Agreement is in force, every newly granted European patent can be registered as unitary patent throughout the initial 17 participating states (i.e., Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden), upon a valid request for unitary effect to be filed with the EPO within one month after grant. Whenever this type of patent protection is sought, it should be born in mind that is not possible to opt out a unitary patent of the competence of the UPC.
Moreover, it is now possible to centrally enforce and challenge the validity of both European patents with unitary effect and non-opted out European patents before the UPC.
As to national courts, during the transitional period, they have parallel jurisdiction with the UPC over non-opted out European patents and exclusive jurisdiction over opted-out European patents. National courts also have jurisdiction for all actions relating to European patents and European patents with unitary effect that do not fall within the exclusive jurisdiction of the UPC, such as for example actions related to the right to a patent or actions related to the transfer of a patent right.
