THE OPT-OUT AND ITS REVERSIBILITY
The opt-out: what is it?
The opt-out, provided by Article 83 of the Agreement on the Unified Patent Court (UPC) allows derogating from the exclusive jurisdiction of the UPC, within the framework of a transitional period of seven years from the entry into force of the Agreement on the UPC, renewable once.
It will also be possible to opt-out before the start of the UPC, during a preliminary period called "sunrise period".
The opt-out is not possible for the patents with unitary effect but only for European Patents and for European Patent Applications, except after they are involved in litigation started before the Unified Patent Court.
The opt-out process is very simple as it requires a mere a declaration to the UPC.
This declaration shall be filed by the proprietor of the European patent or the applicant of the European patent application.
The declaration to the opt-out registry can be made electronically via the “Case Management System” provided by the UPC, using an appropriate form.
Reversibility of the opt-out
The opt-out can be withdrawn at any time upon request on the above-mentioned management system, for each patent individually. Following this withdrawal, the patent is removed from the opt out registry maintained by the UPC.
This withdrawal of the opt-out is impossible when an action within the exclusive jurisdiction of the UPC has already been brought before a national court.
However, actions that are not within the exclusive jurisdiction of the UPC, such as actions relating to the ownership of the European patent or to a contract involving European patent shall be subject to national courts and would not prevent such withdrawal of the opt-out.
The withdrawal of the opt-out is in principle permanent: no further opt-out can be made for the patent concerned.
The opt-out or its withdrawal: how to correct it?
The declaration of opt-out or its withdrawal are not checked by the UPC’s Registry. This is only at the time of a litigation that the Court would check whether it has jurisdiction by assessing the validity of the opt-out declaration and/or withdrawal.
It is possible to correct an opt-out declaration or its withdrawal by means of a correction request on the Case Management System.. All the provided information can be modified, except for the patent number: in this case, a new request containing the correct patent number must be filed.
The opt-out is an important legal act determining your litigation policy. It requires that the registry be up to date and implies a good command of the UPC’s IT tools and notably the “Case Management System”, as no control is carried out at the time of filing. Our experts at LAVOIX are at your disposal to assist you in this process.