Opting out of the jurisdiction of the UPC: the sunrise period has begun

Posted: 04/04/2023

The Unified Patent Court (UPC) is set to open its doors on 1 June 2023, when the Agreement on the Unified Patent Court (UPCA) enters fully into force. The UPC will have jurisdiction to decide on the infringement and validity of both ‘classic’ non-unitary European patents and new 'unitary patents'. Decisions of the UPC relating to unitary patents will apply in all UPC participating member states.

For non-unitary European patents, decisions will apply in those UPC participating countries in which the patent has been validated. UPC decisions will therefore have a wide-ranging international effect, enforcing or invalidating patent rights across a large market.

The default position is that non-unitary European patents will fall within the jurisdiction of the UPC. However, during the first seven years of the UPC (with a possible extension after five years), holders of non-unitary European patents validated in any of the UPC participating member states may choose to opt their patents out of the jurisdiction of the UPC by filing an opt-out request with the court.

Patent applications may also be opted-out before they are granted. However, once the court becomes operational on 1 June 2023, opt-outs will not be available if an action has been brought before the UPC in respect of the patent.

The effect of the opt-out is that patent litigation must take place in national courts. Unitary patents cannot be opted-out.

Opt-out requests may also be filed now, as we are in the three month ‘sunrise period’ leading up to the opening of the UPC. This period began on 1 March 2023, and hundreds of opt-out requests have already been submitted to the UPC Registry via the online case management system. 

Patent holders choosing to wait until after 1 June 2023 to opt their patents out of the jurisdiction of the UPC run the risk of being unable to do so, should litigation proceedings be brought by a third party. The timing of filing an opt-out request is therefore very important.

On a practical note, the UPC has published information on the sunrise period, recommending that applicants intending to opt a large number of patents out should file their requests in order to ensure that the requests are successfully lodged before 1 June 2023. Further information is available on the UPC website.

This article was co-written with Sheelpa Maroo, knowledge paralegal.

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