A guide to the UPC and the UP - Flipbook - Page 143
8-37
The opt-out is effective from the date of entry in the Register. Although r.5(5) RoP states that the
Registrar shall as soon as practicable enter the opt out on the register, since the application is
made by way of a form on the Case Management System, it will become effective on lodging the
form provided that the opt-out meets all the requirements. However, it is important to opt out
the patent correctly, since otherwise it will be deemed ineffective. The Registrar is bound to
inform the EPO and the relevant national patent offices as soon as is practicable that an opt-out
has been lodged in relation to a European patent. 49
Who Can File an Opt-out Application?
8-38
Under arts 83(3) and 83(4) UPCA the right to apply for an opt-out has only been given expressly
to proprietors and applicants of European patents. It should be noted that the “proprietor”
might not necessarily be the person or company whose name appears in the national patent
offices’ registers, because those registers can be out of date and may not reflect the legal
reality at the time when the opt-out is made, for example, due to a change of company name,
a transfer of the patent, or a merger or acquisition of the patentee. Therefore, a declaration
must be filed by the person making the application to opt out on behalf of each proprietor
or applicant, stating that they are entitled to be registered as the proprietor or applicant as
may be. 50
8-39
In relation to the r.5(3)(e) RoP declaration, the proprietor of a European patent will be the
person entitled to be registered as the proprietor under the law of each EPC Contracting State
in which such European patent has been validated, whether or not such person is in fact
recorded in the national patent register. 51 In relation to the application for a European patent,
this will be the person entitled to be registered as the applicant 52 in the European Patent
Register kept by the EPO irrespective of whether or not such person is in fact recorded as
such. 53 Although there is a rebuttable presumption in r.8(5)(c) RoP that the person shown in
each national patent register and the European Patent Register is the person entitled to be
registered as the proprietor or applicant as the case may be, the declaration is still required. 54
Evidence of title is not, however, required by the Registrar, although it would be needed
should the opt-out be challenged either before the Court 55 or a national court at a later date.
Therefore, proprietors and applicants should ensure that they have the evidence to show their
entitlement to opt out a patent when the opt-out was made and if one proprietor is acting on
behalf of a number of proprietors, the authority on which they are acting. 56
49
50
51
52
53
54
55
56
r.5(11) RoP.
r.8(3)(e) RoP. See paragraphs 8-43 to 8-45.
r.8(5)(a) RoP.
Under art.60 EPC.
r.8(5)(b) RoP.
r.5(4) RoP states that r.8 RoP does not apply to an application to opt out or to an application to withdraw the opt-out.
This could be by way of a preliminary objection under r.19 RoP. See chapter 12 (Written Procedure) paragraphs 12-04
to 12-28.
e.g. a power of attorney in a co-ownership agreement granted to one of the co-owners to act on behalf of the other
could suffice.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 133
