In the previous article, the possibility of derogating from the exclusive jurisdiction of the UPC for European patents with national effect (“Opt-out”) was presented. Let's now look at the terms of an Opt-out request.
Who can Request an Opt-Out?
The Opt-out request must be made by the effective (or real) owner of the patent or patent application, or by his authorized representative. There is, however, no obligation of representation.
In the case of co-ownership, the opt-out request must be made unanimously by all the co-holders or by an authorized common representative. To avoid any subsequent conflict situation, it would be interesting to provide for the question of a possible opt-out in patent co-ownership contracts.
If, prior to any Opt-out request, a SPC (Supplementary Protection Certificate) has already been issued for a patent, then a subsequent opt-out request must be made jointly by the patent holder(s) and the owners of the SPC.
With regard to patents or patent applications for which licenses have been granted, a licensee, even an exclusive one, cannot request an Opt-out.
If the holder(s) is (are) not the one(s) registered in the national registers, then a declaration specifying that the person(s) filing the opt-out is (are) the actual holder(s) must accompany the latter.
However, there is no control by the UPC registry of the veracity of the information provided as to the ownership of the rights.
If errors have been made or information is missing from an opt-out request, the possibility is offered to the applicant to rectify this request. It should be noted that any rectification will delay the taking effect of the request accordingly, leaving the risk that an action may be initiated, in the meantime, before the UPC.
Many IP players have feared that opt-outs or waivers of opt-outs be requested fraudulently, thus it is now planned, for the real owner(s), to be able to request the deletion of such requests.
How and Where to Request an Opt-Out?
The opt-out request must be filed with the UPC electronically using a dedicated CMS (“Case Management System”) portal. It is not subject to any fee.
The opt-out request takes effect on the date of registration in the register, as does the waiver of an opt-out.
As this request is published on the UPC website, it will be possible for an applicant or holder to check whether an opt-out has been requested, fraudulently, for one of its patent applications or one of its patents.
In the next issue: Advice to help choose between jurisdiction of the UPC or opt-out
