The new Unified Patent Court (UPC) for certain member states of the European Union is coming into existence on 1 June 2023. It will be the appropriate forum for enforcement and other actions, e.g., revocations, for all new European patents with unitary effect ("Unitary patents") as well as all existing and future European patents that have been validated nationally, unless the European patent has been "opted-out" of the jurisdiction of the UPC. The opt-out procedure does not affect Unitary patents.

There is a feature of the UPC opt-out procedure that may be worth drawing attention to as follows. The so-called "opt-outs" from the jurisdiction of the UPC that can be filed now in the "sunrise" period for applicants for European patents or for proprietors for European patents actually function as the basis for an initial defence to a central revocation attack rather than an initial bar to filing such an action.

The idea of an "opt-out" from the jurisdiction of the UPC probably sounds like a way to "immunise" or otherwise automatically remove a patent from a central revocation action at the UPC where a single revocation action can knock out all of the national validations of a European patent in the countries that are members of the UPC system. In other words, you might think that an action for revocation could not be filed if an opt-out was in place.

However, that is not how it works in practice. There is no automatic "immunisation" as such.

Instead, the existence of an opt-out is an initial defence (termed a "preliminary objection") to a central revocation action.

The defence is a procedure under Rule 19 of the Rules of Procedure of the UPC (RoP UPC).

If the patent proprietor wants to rely on the existence of the opt-out then an objection under Rule 19 to the central revocation attack must be filed at the UPC.

The period to file such a defence is one month from the date of service of the statement of claim (i.e., notification of the action for central revocation). Certain UPC periods of time are extendable on a discretionary basis under Rule 9(3) RoP UPC but until practice settles down, it would probably not be advisable to rely on any extension being available.

This probably won't happen in every case where a central revocation action is filed since the party requesting revocation must either be unaware of the opt-out or have a fairly strong view that the opt-out is invalid for some reason. There are also the UPC court fees to pay up front. However, it may be that for some cases the costs of the official fees will not be a deterrent. In the early days of the UPC maybe some players will just want to test the system a bit also.

Opt-out requests are published but it is not clear yet how fast this will work – and maybe some parties won't be put off filing a revocation action anyway.

Consequently, parties who are filing opt-out requests still need to be ready to deal with the UPC even if an opt-out request has been filed.

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.