Opt-outs in the sunrise period

Registering and withdrawing an opt-out

By registering an opt-out you will remove the Unified Patent Court (UPC) as an option for both enforcement and validity challenges. The opt-out can ordinarily be withdrawn by the patent owner in order to restore the UPC option, but this cannot be done if there have ever been any proceedings regarding the European patent at any of the relevant national courts. This means that if an opt-out is registered there is a risk that actions by a third party will prevent you from using the UPC for enforcement in future. Similarly an opt-out cannot be registered once any proceedings regarding the European patent have occurred at the UPC even if those proceedings are instigated by a third party. Withdrawal of an opt-out is permanent, as it is not possible to register an opt-out a second time.

What is the sunrise period?

The sunrise period is a three-month period running through March, April and May 2023 during which opt-outs can be filed and withdrawn but UPC actions cannot yet be filed.

Who can opt out?

Applications for opt-outs can only be lodged on behalf of the owner(s) of the European patent or patent application. This right rests with the person(s) that are truly entitled to be a proprietor of (or applicant for) the patent, regardless of what names are recorded on existing registers. If there are multiple owners (including the situation where ownership is different for different countries even if they have lapsed), ALL of the owners must consent to registration or withdrawal of an opt-out. If there is uncertainty over ownership then we would recommend resolving that uncertainty before lodging an application to opt out or withdrawing an opt-out.

Which 17 countries will be part of the UPC on 1 June 2023?

The 17 countries  will be Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

Can you opt out some countries and not others?

No – an opt-out is for the whole European patent including all parts/validations.

If the European patent is only active in countries outside those 17 countries (e.g it’s only in force in UK and Norway) can/should the patent be opted out?

A European patent can be opted out regardless of which countries it is currently in force in. However, on 1 June 2023 the UPC will not have jurisdiction to decide on the validity for any countries outside the 17, and therefore there will usually be insufficient benefit to make it worthwhile to file an application to opt out at this stage.

The video below discusses the advantages of disadvantages of opting out. It was recorded in June 2022 before it was known that the UPC would open on 1 June 2023.