With the imminent entry into force of the Unified Patent Court Agreement, the countdown has begun to opt-out of the jurisdiction of the new European court. Marie-Noëlle de la Fouchardière explains what can be opted out, by whom and how to simplify the management of opt-out declarations.
The latest information on the Unified Patent Court (UPC) indicates a possible entry into force in March 2023.
If this date is confirmed, the three-month Sunrise period, which will allow opt-out from the jurisdiction of the UPC before its entry into force, would start in December 2022.
European rights holders who have planned to opt-out all or part of their patent portfolio may only have a few months left, therefore, to finalise their preparations and choose the means to effect their opt-outs.
The requirements for opting-out are defined in Rule 5 of the Rules of Procedure of the UPC, the latest version of which was adopted on 8 July 2022 and entered into force on 1 September 2022. Practical guidance and templates for opt-out applications and mandates are also published on the UPC Case Management System (CMS) webpage.
Below we summarise the key points and answer the questions we are most frequently asked by our clients.
Unified Patent Court: How to file an opt-out request
Published European patent applications, granted European patents and associated supplementary protection certificates (SPCs) are eligible for opt-out. The opt-out application needs to state the EP publication number and, for SPCs, the SPC country and the SPC number. Designation/validation countries and numbers do not need to be provided.
The application should be lodged on behalf of all "entitled" owners in all states for which the European patent has been granted (or in the case of a European patent application, in all designated states), including those who are not party to the UPC Agreement (new version of Rule 5(1)).
- The entitled owners are those who are entitled to be recorded in the European/national registers as owners (registers are not necessarily up to date, so the entitled owner may be different from the registered owner – updating the European/national registers is not required for the purpose of lodging an opt-out application).
- It will be necessary, therefore, to verify the entitled owners for all rights listed in the opt-out application, including in states that are not party to the UPC Agreement.
- All entitled owners should be listed in the opt-out application (name, postal address, email address).
- All of them shall give their consent to the opt-out, and if necessary sign a mandate authorising the person in charge of lodging the opt-out application to do so.
There is no requirement for representation for lodging an opt-out application: it may be lodged by the entitled owner or by a third party on behalf of all the entitled owners.
A mandate must be included in the opt-out application if it is not lodged by a representative according to Article 48 of the UPC Agreement or, in the case of a sole entitled owner, by the entitled owner themselves.
The opt-out application should include a declaration by the signatory of the application that the owners named in the application are the entitled owners.
The opt-out application should be lodged with the UPC Registry, either manually directly in the UPC CMS or through an API.
Unified Patent Court: Simplify the management of UPC opt-outs
Questel, a global leader in IP management software and services, has developed a dedicated tool to facilitate submission of batch opt-out requests. This tool will be operated by Novagraaf, an IP law firm and member of the Questel Group.
The proposed service has been designed to simplify the opt-out operations for the rights holder(s) and those providing instructions. No mandate will be required and it will be completely paperless. It will involve the following steps:
- sending a list of rights and entitled owners to the person providing instructions, along with a declaration to be signed;
- collecting formal agreements from all entitled owners;
- filing the opt-out application when all signatures are received.
Unified Patent Court: The importance of preparing in advance
Beyond the filing of opt-out applications, Novagraaf and Questel are available to assist clients with preparation for the start of the UPC, including:
- Establishing an opt-out strategy.
- Identifying the rights to be opted-out under the established strategy.
- Correcting, completing and formatting portfolio data.
- Verifying the registered owners of rights in the European/national registers to help confirm the entitled owners and possibly trigger an update of the registers.
- Coordinating between multiple owners.
The compliance of an opt-out application with the requirements defined in Rule 5 of the Rules of Procedure of the UPC, and the accuracy of the information provided are essential. No checks will be made by the UPC Registry. In the event of an error, it will be possible to lodge corrections, but the opt-out will only take effect on the date of the correction. In other words, it will not be possible to correct errors after an action has been commenced before the UPC. An erroneous opt-out application will have no effect.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.