Momentum is gathering towards the UPC becoming operational. So it is important for all owners of European patents, European patent applications and inventions for which patent protection may yet be applied for to decide how to manage their filing and opt-out strategies. Are you one of those owners?
If so, here are some light-hearted Q&As, to highlight why it is important to be thinking and planning now:
Q. Why is this not titled “Opt in your European Patents”?
A. Because the default position is that, on the day the UPC comes into operation, every European patent with designation(s) in UPC countries will already be “in”, like it or not.
Q. When is this happening?
A. Soon. As things stand, only Germany needs to complete its ratification of the UPC Agreement. Germany’s national ratification process has already been completed; its deposit of its instrument of ratification is being held back until practical steps requisite for the court to become operational have reached a sufficiently advanced stage.
Q. Does it really matter?
A. You bet – see below:
IF YOU DO NOTHING – result! You can sue an infringer in the UPC under your European Patent (EP) in one participating country (or in the “central division”) and, if they are held to infringe and are injuncted, that injunction will be effective in every participating country for which you hold a corresponding European Patent (i.e. same number, different country prefix, DE, FR, IT, etc). [W]hole in one. You will also be able to recover damages for past infringements across all relevant countries.
BUT – if your patent is revoked or there’s a finding of non-infringement then that’s the result in all the participating countries too, so you cannot fight on in some other participating country. A [w]hole in one for the other side. To make it clear, this would lead to revocation, in one fell swoop, of all designations of your European patent corresponding to the countries participating in the UPC.
Q. Which countries?
A. Currently 16 of the signatory countries of the EU have completed ratification of the UPC Agreement. Germany will make it 17. More may join. (This does not include the UK, which ratified in 2018 and withdrew its ratification in 2020. Thank you Boris.)
Q. What if I opt out?
A. None of the above, no change for now and for the life of the patent. No pan-European gain, but no corresponding risk either.
Q. Can I change my mind later?
A. Yes, but only if there has been no litigation in the meantime.
Q. And back again?
A. No. Although there is nothing to prevent this in the UPC Agreement, the UPC’s Rules of Procedure, in their current draft form, prevent the hokey-kokey. If you opt out, you can withdraw the opt-out (provided national proceedings have not commenced in the meantime), but you cannot then opt out again.
Q. Must I decide now?
A. No, you can decide to opt out at any time until litigation is started. But bear in mind that’s not entirely within your control – for instance what if a competitor tries to revoke your patent, or seeks a declaration of non-infringement? If that is a realistic possibility you may want to use the “sunrise period” which lets you opt out before the whole system comes into force – so you’ll be opted out before your competitor can issue its claim.
Q. And if I maybe do want to opt out some (or all) of my European Patents?
A. Get started now – it’s a lot of work and not as simple as you might expect. Look out for subsequent blogs that will address in more detail the opt out process.
Q. Still, does it really matter?
A. Perhaps not, if you are still asking, but we can help you decide. This is a strategic decision for a patent owning company, affecting some of its most valuable assets. There are a lot of factors that need to be taken into consideration. We are very happy to provide support and consultation in working through these issues and discussing the nuanced considerations, which may not be immediately obvious.
Q. But I clicked on this to get a proper list of pros and cons?
A. This will follow in a subsequent blog – keep a look out.
About the author(s)
Nick has a wide-ranging dispute resolution practice, with contrasting specialisms in telecoms standards, trade secret protection, copyright and defamation. He is also a qualified mediator.
Ailsa Carter is a London-based Senior Associate Professional Support Lawyer in Gowling WLG's Intellectual Property team.
