A guide to the UPC and the UP - Flipbook - Page 136
8-07
At any time during this seven-year transitional period, a proprietor of a European patent,
European patent application or related SPC 4 can choose to “opt out” from the (non-exclusive)
jurisdiction of the Court altogether. 5 The opt-out covers all states for which the European patent
has been granted or which have been designated in the application. 6
8-08
An opt-out is only possible as long as no action has been filed before the Court in relation to
that European patent. 7 The timing of an opt-out is therefore a key consideration for proprietors
of European patents and European patents applications.
8-09
Once a European patent is opted out (and subject to the opt-out not being withdrawn),
it remains opted out for the rest of its life, and not merely for the remainder of the seven-year
transitional period. 8 A proprietor who registers an opt-out in respect of a European patent will
therefore have the legal certainty that no pre-emptive actions for revocation or a DNI in relation
to that European patent can be brought before the Court; such actions have to be brought
before the national courts.
8-10
It is possible to withdraw an opt-out at any time provided that an action has not been filed
before a national court. 9 Once the opt-out has been withdrawn, the European patent cannot be
opted back out again. 10
8-11
The effect of the transitional provisions on the jurisdiction of the Court and national courts can
be seen in figure 8-1.
Figure 8-1: Jurisdiction of the Court and National Courts
National patents
Opted-out
European patents
European patents
granted in
non-contracting
Member States
Exclusive jurisdiction of the
courts of the Member States
Non-opted
out European
patents
Unitary patents
Exclusive jurisdiction
of the Court
(A) During the transitional period
4
5
6
7
8
9
10
In practice, it is the opting out of the European patent on which the SPC is based which effectively opts out the
respective SPC.
art.83(3) UPCA. This provision refers to “exclusive competence”, not to jurisdiction. This has proved one of the
controversial issues, see paragraphs 8-22 and 8-23.
r.5(1)(b) RoP. See also paragraphs 8-25 to 8-30.
art.83(3) UPCA.
This has been one of the controversial points relating to the transitional provisions, see paragraphs 8-17 to 8-21.
art.83(4) UPCA. See paragraphs 8-50 to 8-56 for more detail on withdrawing opt-outs.
r.5(10) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 126
