Opt-outs from the jurisdiction of the UPC

The future patent jurisdictions in Europe

National jurisdictions (infringement and validity)

UPC (infringement and validity)

Opt-out

No opt-out

National patents

European patents (EP) granted in non UPC Contracting Member States

European patents (EP) granted in UPC Contracting Member States

Unitary patents (UP) for UPC Contracting Member States

National offices

European Patent Office

Opt-inOnly during the transitional period

National offices↑ National patents↑ National jurisdictions (infringement and validity)

European Patent Office↑ European patents (EP) granted in non UPC Contracting Member States↑ National jurisdictions (infringement and validity)

European Patent Office↑ European patents (EP) granted in UPC Contracting Member StatesOpt-out → National jurisdictionsOpt-out → Opt-in → No opt-outNo opt-out → UPC (infringement and validity)No opt-out ···→ National jurisdictions Only during the transitional period

European Patent Office↑ Unitary patents (UP) for UPC Contracting Member States↑ UPC (infringement and validity)

Opt-out

When?

- Before the entry into force of UPC, during a provisional application period “Sunrise Period” started on March 1st, 2023 [R. 5-12]

- During a transitional period of at least 7 years as from the entry of the UPC unless an action has already been brought before the UPC [Art. 83 (1) and (3) UPCA]

Who?

[R. 5-1 and R. 5-3]
- The actual patent proprietor/applicant (may be different from the registered proprietor/applicant) - If an EP is co-owned, all the actual co-owners

How?

- Online at the Registry of the UPC via its Case Management System (no official fee is due) - For one proprietor, possibility to lodge multiple opt-outs in one step

Opt-in (withdrawal of opt-out)

When?

- Opt-in possible, unless action is or has ever been pending in national court [Art. 83-4 UPCA]

Who?

[R5-7]
- The actual patent proprietor/applicant (may be different from the registered proprietor/applicant) - If an EP is co-owned, all the actual co-owners

How?

- Online at the Registry of the UPC via its Case Management System (no official fee is due) - No second opt-out possible

Possibility to remove an unauthorized opt-out or opt-in

[R. 5A]

- If there has been an unauthorized opt-out/opt-in, the actual proprietor may apply to remove - Possible only if a third party has fraudulently or mistakenly filed an opt-out/opt-in - No removal possible if the proprietor filed an opt-out/opt-in, but did so without complying with the rules

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