Unitary patent system: the transitional period and opt-out
The transitional period
The UPC Agreement provides that during the first seven years after the date that the UPC Agreement enters into force (the ‘transitional period’) you can bring a claim relating to a European patent in a national court or the Unified Patent Court. The UPC will have jurisdiction across all member states participating in the unitary patent system, whereas national courts only have jurisdiction nationally.
During this ‘transitional period’, patentees can choose to opt out a European patent bundle from the jurisdiction of the UPC (unless UPC proceedings have been commenced already). Patent infringement and revocation actions for opted-out European patents can be brought only before the relevant national court.
The transitional period may be extended by a further seven years, following a consultation with UPC users and an opinion from the UPC.
Opt-out and opting back in
In terms of timing, an opt-out can be notified until the very last day of the transitional period and can apply to granted or pending European patents.
Although there is some debate, the consensus view is that an opt-out is effective for the life of a European patent. However, a patentee does have the option of opting the European patent back in at any time provided no national proceedings have been commenced in the interim. Once opted back in you cannot opt out again.
Prior to the UPC opening for business, there will be a “sunrise period” in which the UPC Registry will accept applications to opt out European patents, thereby ensuring that opt-outs can be in place from day one of the UPC. Such a sunrise period is provided for under the Protocol on the Provisional Application of the UPC Agreement and the current draft of the Rules of Procedure.
What will it cost?
Initially, the fee for opting a European patent out of the jurisdiction of the UPC was proposed to be €80 per patent family (with an identical fee applying for opting the patent back into the jurisdiction of the UPC). However, the UPC Preparatory Committee has recently confirmed that the proposal for an opt-out fee of €80 has been removed; thus patentees may opt their European patents out of the jurisdiction of the UPC free of charge.