Upon entry into force, the Unified Patent Court (UPC) will have exclusive jurisdiction over the majority of patent actions (as defined in Article 32(1) of the UPCA) not only for European patents with unitary effect but also for European patents with national effect. The jurisdiction of the UPC extends territorially to all the Contracting Member States having ratified the UPCA at the time the decision is rendered.
For a transitional period of 7 years from the entry into force of the UPCA, possibly extendable up to 7 more years, it will however be possible to choose between the national courts or the UPC to initiate an action for infringement or an action for invalidity relating to a European patent with national effect.
Nonetheless, during this period, it will be possible to derogate from the exclusive competence of the UPC for European patents with national effect – the “opt-out”. When such a derogation has been requested, only national courts will have jurisdiction throughout the life of the patent.
This derogation applies to European patent applications, to European patents with national effect as well as to Supplementary Protection Certificates (SPC) based on such patents. Thus, if an SPC is issued for a patent for which an Opt-out has been previously requested, then the Opt-out automatically extends to this SPC.
In no circumstances does this derogation apply to unitary patents or SPCs based on unitary patents. Indeed, if an Opt-out has been requested for a European patent application, the fact of requesting, when it is granted, a unitary patent entails the abandonment of the Opt-out.
An Opt-out is effective for all Contracting Member States for which the European patent has been granted or which are named in the application. It is not possible to request an opt-out only for certain states. Furthermore, if the number of Contracting Member States increases after the date of registration of the Opt-out, this automatically applies to the new States.
The expiry of the transitional period will not affect any action brought before a national court during the transitional period. This action will continue in the national court concerned even after the transitional period.
When to request an Opt-out?
An Opt-out can be requested as soon as a European patent application is published, but not before the start of the so-called “Sunrise” period beginning three to four months before the entry into force of the UPCA. An Opt-out may be requested for an expired patent up to five years after expiration.
In any case, the period for requesting an Opt-out will end one month before the end of the transitional period.
Another condition for being able to request an Opt-out: no patent action may have been brought before the UPC.
Withdrawal of an Opt-out?
It is possible to withdraw an Opt-out at any time so long as no action for which the UPC would have been competent has been brought in a national court. Once this withdrawal is effective, the jurisdiction of the UPC is restored. A subsequent Opt-out is impossible.