A guide to the UPC and the UP - Flipbook - Page 65
and counterclaims for revocation and declarations of invalidity. 21 The term “supplementary
protection certificate” is defined as meaning “a supplementary protection certificate granted
under Regulation (EC) No 469/2009 or under Regulation (EC) No. 1610/96”. 22 For SPCs
referencing a European patent as the “basic patent”, it will be possible to opt out of the Court's
jurisdiction for a limited time. 23 The position in respect of SPCs granted on the basis of a
national patent will remain unchanged – they fall exclusively within the jurisdiction of the
national courts.
4-26
With respect to a Unitary SPC although the UPCA sets out the competence of the Court in
respect of such a Unitary SPC, it does not address how such right will be granted, and in
particular who will be the granting authority. These issues are addressed by the pending
legislation that the European Commission has proposed referred to at paragraph 4-04.
Opt-out of National SPCs based on a European Patent as
the Basic Patent
4-27
During the transitional period of seven years 24 from the entry into force of the UPCA, the
holder of an SPC granted with a European patent as the “basic patent” can opt out from the
exclusive jurisdiction of the UPC. 25 It is not possible to opt out where the “basic patent” is a
Unitary patent.
4-28
The validity of an SPC subject to an opt-out can only be challenged before national courts,
and any such action pending at the end of the transitional period will continue in the
national courts. 26
4-29
An application to the Court registry to opt out a European SPC can be made at any time up
until one month before the expiry of the seven year transitional period, 27 with the opt-out
taking effect upon its entry into the register. The mechanism for opting out is provided for in
r.5 RoP. 28 If a European patent has been opted out, and an SPC subsequently granted, the SPC
is automatically opted out, with the opt-out continuing for the life of the SPC. 29
21
22
23
24
25
26
27
28
29
art.32(1) UPCA.
art.2(h) UPCA.
See paragraphs 4-27 to 4-32.
The transitional period is seven years from the entry into force of the Agreement, but this may be extended by a further
seven years under art.83(5) UPCA.
art.83(3) UPCA.
art.83(2) UPCA.
art.83(3) UPCA.
See chapter 8 (Transitional Provisions (Including Opt-outs and Opt-ins)) paragraphs 8-25 to 8-49.
r.5(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 55
