A guide to the UPC and the UP - Flipbook - Page 66
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For SPCs granted before an application to opt out the relevant European patent, both the
proprietor(s) of the patent and (if different) the SPC must register the opt-out, with “proprietor”
defined in r.8(5) RoP as the person entitled to be registered whether or not such person is in
fact recorded in the national register. For European patents that have expired before the SPC is
opted out, it remains the case that both the proprietor of the patent and SPC must register the
opt-out. R.5(3) RoP provides for the information required to opt out, such as the proprietor(s)
name and address. 30
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As is the case for European patents, 31 an action for infringement of an SPC or a
declaration of invalidity of that SPC can be commenced in national courts during the
transitional period provided the same action has not already been commenced before the
Court. 32 However, timing may be crucial given that an opt-out only takes effect upon entry into
the register. Accordingly, if proceedings are commenced before the Court, the Court is seized
of the proceedings and any opt-out application lodged afterwards will be deemed ineffective.
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The SPC proprietor can opt back into the jurisdiction of the Court during the transitional
period, provided no action has been brought before a national court. 33 As with the opt-out,
withdrawal of the opt-out takes effect upon entry into the register. If an action has been
commenced in a national court and the withdrawal of the opt-out not registered, the
application will be deemed ineffective. 34
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32
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Under r.5(3) RoP, the application to opt-out must contain the following: (a) the name of each proprietor or applicant for
the European patent or application and the holder of any SPC based on the European patent and all relevant postal and
(where relevant) electronic addresses; (b) the name and postal address and electronic address of (i) the representative
appointed by the applicant or the proprietor in accordance with art.48 UPCA or (ii) any other person lodging the application
to opt out on behalf of the proprietor or the applicant and the mandate for lodging the application to opt out; (c) details of
the patent and/or application including the number; (d) details of any SPC granted based on the patent concerned, including
the number; and (e) where the patent or application is owned by two or more proprietors or applicants and the person
lodging the application is not recorded as the proprietor or applicant, a declaration by or on behalf of each proprietor or
applicant pursuant to r.8(5) that [it] is entitled to be registered in the national patent register.
See chapter 8 (Transitional Provisions (Including Opt-outs and Opt-ins)).
art.83(1) UPCA.
art.83(4) UPCA.
r.5(8) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 56
