• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
  • Home
  • About
  • Gowling WLG
  • Legal information
  • Privacy statement
  • Cookie Policy
  • Home
  • About
  • Posts
  • Blogs
    • B2022
    • The IP Blog
    • Public Law & Regulation
    • AI
    • The UPC Blog

LoupedIn

What is “Opting Out” and why does it matter?

Published on November 4, 2021 by Gordon Harris and Seiko Hidaka

What is “Opting Out” and why does it matter?

The introduction of a new jurisdiction is rare enough, but the advent of a new court system that allows for litigation concerning valuable property assets across a multi-national market of over 450 million people and over 20 separate nations is a big event. That is what the Unified Patents Court system in Europe amounts to – it is the biggest change in the world of patents for over 40 years.

It is no surprise then that the planners of the new system have built into the rules the option for current patent owners, and people/businesses looking to commence new patents in the medium term, to “opt out” of the system, and to take a look to see how it works, before deciding whether it is something with which they want to engage.

This is the first in a series of blogs in our build up to the commencement of the UPC dealing with various issues around the “opt out” process and the strategic issues involved.

The Legal Basis

The Unified Patents Court Agreement (UPCA) says, at Article 83(3):

“Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end, they shall notify their opt out to the Registry by the latest one month before the expiry of the transitional period. The opt out shall take effect upon its entry on the register.”

Let us look at the highlighted words/phrases in turn.

The Court means the Unified Patents Court in any of its many forms – a national division, a regional division or the central division.

The transitional period means the period of seven years after the commencement of the UPC jurisdiction during which any owner of a patent within the system already has the choice of whether to use the UPC, or to use the previous system of litigating separate designations in their appropriate local courts.

What is the effect of an Opt Out?

The effect of a successful opt out is that the patent in question cannot be the subject of litigation in the UPC jurisdiction, either in respect of an action for infringement or a petition for revocation. All litigation relating to an opted-out patent must, as previously, be conducted in the national courts of countries where the patent has been designated.

For a patent owner, to opt out means that they cannot commence a single pan-European action to enforce the patent across the scope of the UPC jurisdiction. However, importantly, whether as a counter-claim to such an action or by separate petition, the patent will also be safe against being invalidated across the whole of Europe in one action. Until it becomes clear how the new court system works and, for example, whether it is “patent friendly”, owners of valuable patents may well think that it is the safer bet to opt-out of the UPC jurisdiction and wait to see how things evolve for a while.

How do you Opt Out a patent?

There are many factors to consider in making this decision and these will be the subject of later posts. In our next post on this topic we will look at when the process of opting out becomes available and the importance of timing.

Meanwhile, Austria has put in place a motion in the parliamentary process to become the 13th UPC Signatory State to ratify the PAP-Protocol. Once completed, the PAP-Protocol comes into force and practical steps to prepare for the implementation of the UPC can begin, as explained in our previous blog. 

About the author(s)

Photo of Gordon Harris
Gordon Harris
Of Counsel - Global IP Leadership at Gowling WLG | View Profile | See recent posts

Gordon Harris is part of the Global IP Leadership Team for Gowling WLG, working across all the firm's offices to help build the practice and develop new specialisms.

  • Gordon Harris
    https://loupedin.blog/author/gordonharris/
    Patents in 2020 – The year in review
  • Gordon Harris
    https://loupedin.blog/author/gordonharris/
    Gearing up for UPC Implementation one step closer as Slovenia ratifies the PAP Protocol
  • Gordon Harris
    https://loupedin.blog/author/gordonharris/
    One more UPC Signatory State to ratify the PAP Protocol
  • Gordon Harris
    https://loupedin.blog/author/gordonharris/
    Who controls your opt-out?
Photo of Seiko Hidaka
Seiko Hidaka
See recent posts

Seiko Hidaka is a patent litigator with an international outlook, known for horizon scanning and thought leadership.

  • Seiko Hidaka
    https://loupedin.blog/author/seikohidaka/
    Gearing up for UPC Implementation one step closer as Slovenia ratifies the PAP Protocol
  • Seiko Hidaka
    https://loupedin.blog/author/seikohidaka/
    One more UPC Signatory State to ratify the PAP Protocol
  • Seiko Hidaka
    https://loupedin.blog/author/seikohidaka/
    Give support to your favourite judges for the UPC
  • Seiko Hidaka
    https://loupedin.blog/author/seikohidaka/
    One of the three UPC treaties, the Protocol on Privileges and Immunities of the Unified Patent Court (PPI) is now in force despite Brexit issues

Gordon Harris and Seiko Hidaka

Filed Under: The Unified Patents Court in Europe Tagged With: Intellectual Property, litigation, Patents, unified patents court, UPC

Views expressed in this blog do not necessarily reflect those of Gowling WLG.

NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.

Primary Sidebar

Recent Posts

  • MIPIM 2023: Key topics shaping the future of real estate
  • Climate change – New report highlights areas for scaling up action
  • Transferring data out of China? Understand the key points from the Chinese Standard Contractual Clauses

Tags

apprenticeships (5) Artificial Intelligence (AI) (52) Autonomous vehicles (11) b2022 (18) Birmingham 2022 (8) Birmingham 2022 Commonwealth Games (14) brand protection (5) Brexit (23) china (5) Climate change (13) COP26 (11) COP27 (6) Copyright (8) COVID-19 (23) Cyber security (5) Data protection (6) Employment (13) employment law (9) Environment (8) ESG (21) ESG and pensions (9) financial services (5) Intellectual Property (59) IP (9) Life sciences (6) net zero (6) Patents (28) Pensions (41) Pension scams (5) Pension Schemes Act 2021 (11) Pensions dashboards (7) Pensions in 2022 (10) Pensions law (31) Procurement (7) Public Law & Regulation (39) Real Estate (17) Retail (6) sustainability (7) Tech (45) The Week In Pensions (11) Trademarks (13) UK (15) unified patents court (9) UPC (24) Week in HR (8)

Categories

Archives

Gowling WLG is an international law firm comprising the members of Gowling WLG International Limited, an English Company Limited by Guarantee, and their respective affiliates. Each member and affiliate is an autonomous and independent entity. Gowling WLG International Limited promotes, facilitates and co-ordinates the activities of its members but does not itself provide services to clients. Our structure is explained in more detail on our Legal Information page.

Footer

LoupedIn is the Official Gowling WLG Blog. Gowling WLG is an international law firm comprising the members of Gowling WLG International Limited, an English Company Limited by Guarantee, and their respective affiliates. Each member and affiliate is an autonomous and independent entity. Gowling WLG International Limited promotes, facilitates and co-ordinates the activities of its members but does not itself provide services to clients. Our structure is explained in more detail on our Legal Information page.

  • Home
  • About
  • Gowling WLG
  • Legal information
  • Privacy statement
  • Cookie Policy

© 2023 Gowling WLG

This website uses cookies to improve your experience. We'll assume you're ok with this, but you can opt-out if you wish. Cookie settingsACCEPT
Privacy & Cookies Policy

Privacy Overview

This website uses cookies to improve your experience while you navigate through the website. Out of these cookies, the cookies that are categorized as necessary are stored on your browser as they are essential for the working of basic functionalities of the website. We also use third-party cookies that help us analyze and understand how you use this website. These cookies will be stored in your browser only with your consent. You also have the option to opt-out of these cookies. But opting out of some of these cookies may have an effect on your browsing experience.
Necessary
Always Enabled
Necessary cookies are absolutely essential for the website to function properly. This category only includes cookies that ensures basic functionalities and security features of the website. These cookies do not store any personal information.
Non-necessary
Any cookies that may not be particularly necessary for the website to function and is used specifically to collect user personal data via analytics, ads, other embedded contents are termed as non-necessary cookies. It is mandatory to procure user consent prior to running these cookies on your website.
SAVE & ACCEPT