Decision and implementation

The Opt-Out refers to a request procedure by which a classical EP application or an EP patent is withdrawn from the jurisdiction of the future Unified Patent Court, so that the IP right remains subject to national jurisdiction in the member states of the EPC.

The option to opt out will be possible before the effective start of the system (sunrise period) on 1 June 2023 and thereafter during a renewable transitional period of initially seven years and must be filed directly with the Unified Patent Court.

For granted EP patents, it should be noted that the opt-out request must be filed uniformly for all validated parts. Thus, the "all-or-nothing" principle applies. No fee will be charged by the authority for the Opt-Out. The Opt-Out will only become effective upon entry in the register.

Whether an Opt-Out makes sense or is advisable depends on the circumstances of the individual case. It is advisable to think about your individual Opt-Out strategy in the context of the current EP patent portfolio (including supplementary protection certificates). We will be happy to advise you on this at any time, because Opt-Out strategies are as individual as your patent portfolio and its purpose.

Overview

• An Opt-Out withdraws a classical EP right from the jurisdiction of the UPC. Thus, the EP right holder has it in his own hands to clarify jurisdiction.
• An Opt-Out can therefore never be declared for a unitary patent - this is always subject to the jurisdiction of the UPC.
• In the case of multiple applicants/owners, we recommend that the Opt-Out declaration is always agreed with all applicants/owners in advance.
• An Opt-Out declaration is only possible as long as the patent in question has not become the subject of legal proceedings before the UPC.
• The Opt-Out must be declared via the court's CMS system, not at the EPO.
   

White Paper on the Unitary Patent (UP)

We have summarised detailed answers to all important questions on the Opt-Out for you in the White Paper on the Unitary Patent (UP). Please do not hesitate to contact us if you have any questions!