A guide to the UPC and the UP - Flipbook - Page 144
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If the same or different designations of the European patent are owned by more than one
person then the opt-out application for that European patent must be made jointly by all of
the proprietors. 57 A joint application also needs to be made if the holder of an SPC is different
to that of the European patent on which it is based. 58 In view of the wording of r.5(3)(a) RoP
(“the name of each proprietor or applicant for the European patent or application and of the
holder of any SPC”) it is the present view of commentators that the proprietors of all EPC
designations of the European patent (not only of those designations for the Contracting
Member States) must be provided and must agree to the opt-out. Some commentators go
even further and state that also all former proprietors and applicants of all EPC designations
must agree to the opt out, since also former proprietors and applicants might be affected by
an opt-out. However, such a requirement is considered to be too far going, since in practice a
patentee cannot be expected to find out any possible former owners of the patent.
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There is a potential issue for exclusive licensees of European patents as their interests in
relation to opting out a patent may not necessarily be aligned with those of the proprietor.
For example, a proprietor may be more likely to favour an opt-out to avoid the possibility of
losing a European patent in all of the Contracting Member States in which it has been validated
via central revocation proceedings before the Court, whilst an exclusive licensee may be more
likely to favour retaining the option of a proceeding whereby it can assert infringement
throughout Europe via a single action before the Court.
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This means that existing exclusive licensees, which in most cases will have been given the right
to enforce the European patent the subject of the exclusive licence, will need to liaise and
ideally reach an agreement with the proprietor to do whatever it is that they decide would be
best for the European patent the subject of the exclusive licence. In future, this is an issue which
should be addressed by the parties negotiating an exclusive licence of a European patent. Such
a licence could also include a power of attorney to file an opt-out application. On the other
hand, it could be used to prevent an opt-out. It should be noted that disputes about such issues
cannot be resolved by the Court but only via the dispute resolution mechanism that the parties
have agreed in their licence agreement under the national law governing the contract and in the
relevant national court. The Court could, when a dispute arises before it regarding enforcement
or validity of the patent concerned, at most find that the opt-out was validly effected or not.
Representatives and Users of the Case Management System
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r.8 RoP does not apply to applications to lodge or withdraw opt-outs. 59 Therefore, the person
lodging the application to opt out is not limited to being a lawyer or European patent attorney
(EPA) authorised as a representative under art.48 UPCA. 60 But, if they are not a lawyer or an
authorised EPA, they require a mandate from the patent proprietor or applicant. 61 Therefore,
although an EPA, as defined in art.134 EPC, 62 may represent a client in order to opt out their
patent, they will, nevertheless, need to file a mandate.
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There is also an option for the proprietor of the patent, who is a natural person, to opt out
their patent on their own behalf. It nevertheless seems from r.5(3)(b)(ii) that still a mandate
must be uploaded. Also a company representative, if not a lawyer or authorised EPA, will need
a mandate.
57
58
59
60
61
62
r.5(1)(b) RoP and r.5(3)(a) RoP.
r.5(2)(b) and (c) RoP.
r.5(4) RoP.
See chapter 23 (Legal Represtation, Privilege and Code of Conduct) paragraphs 23-01 to 23-05 for further information on
art.48 UPCA.
r.5(3)(b)(ii) RoP. In the Case Management System, the mandate is the only way of identifying the patent’s proprietor(s) and
therefore uploading a mandate is a necessary step in the process of opting out any patent.
A representative for the purpose of lodging opt-outs is not limited to lawyers and EPAs as referred to in art.48 UPCA;
representatives also include representatives and legal practitioners as defined in art.134 EPC (r.5(4) RoP).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 134
