UPC confirmed — how to opt out ahead of 1 June 2023
The unitary patent and Unified Patent Court (UPC) will be implemented on 1 June 2023, subject to its expected ratification by Germany at the end of 2022.
This means that patent owners can soon choose to validate a unitary patent (UP) which covers all EU member states that have ratified the UPC Agreement.
A quick overview
Traditionally, under the rules of the European Patent Convention (EPC), European patents (EPs) must be validated post-grant and maintained individually in each country where they take effect. The validation process can be both complex and costly (in view of translation costs and validation fees — which are charged by the respective national patent offices in which the EP is being validated).
Following the grant of an EP, a UP will make it possible to achieve protection in up to 25 EU Member States by submitting a single request to the European Patent Office (EPO). It will also be possible to validate the granted EP in other states that have not ratified the UPC Agreement.
There will be no change in the pre-grant phase of a European patent application.
Opting out in the ‘sunrise’ period
If you do not wish for the UPC to have jurisdiction over your existing EPs or pending applications, you must ‘opt out’. This ensures that national courts maintain their jurisdiction (as per the current situation). There is no official fee for opting out.
Ahead of the UPC being implemented on 1 June 2023, a ‘sunrise period’ (March to May 2023) will allow patentees to register opt-outs for existing EPs and pending European patent applications.
If you choose to opt out, you have the option of opting back in later — providing that no national proceedings are pending. However, you cannot opt out if proceedings are pending before the UPC.
Opting out can be done either:
- Manually (via electronic forms)
- Automatically (via the API process)
What you need to do now
If you wish to opt out, we can do this for you in bulk for your portfolio.
To opt out your portfolio via the API process, the following details are needed for each granted EP patent or pending application:
- Applicant name
- Patent number
- Country code
- Email address
- Internal reference
- Number and names of IP holders
- SPC number for each territory (if an SPC)
Talk to us
If you would like to opt out your portfolio — or if you have any questions at all about the UPC and what this means for your IP — speak to your usual advisor or our dedicated unitary patent team at firstname.lastname@example.org.
This article was edited on 5 December 2022 to update the references to the UPC’s proposed start date from 1 April 2023 to 1 June 2023, as per the UPC website.