Which practical aspects do I have to consider when opting out ?

If opt out requests are not validly filed the perceived removal of a patent from the jurisdiction of the UPC may not be effective. Third parties, if they become aware of such an ineffective opt-out could therefore bring court actions at the UPC, despite the seeming safety provided by the opt-out.

Practical points to be considered to ensure that opt-out requests are valid:

The opt-out request needs to be filed in the name of the correct proprietor. Proprietorship of patents change frequently and the European and/or national patent registers often do not show the current patent proprietor. The European or national patent registers cannot therefore be relied upon as a source of information for opting out. It is also not unheard of that patent proprietors are not immediately able to say which company in a group of companies is the correct proprietor of a particular patent. Situations in which a transfer of right is not effective (be that for formal or legal reasons) are also not uncommon. There is consequently the possibility that a request for opt-out may be filed in a wrong name.  Proprietors are consequently urged to apply the relevant amount of due diligence to ensure that opt-out requests are filed in the name of the correct party. It will be appreciated that performing the required due diligence may be a time consuming exercise, in particular if a large portfolio of existing European patents is to be opted out during the sunrise period (see also: What is the sunrise period for opting out and how long is it?)
 
If a patent is owned by more than one proprietor a request for opt-out needs to be filed in the name of all proprietors to be effective. Early agreement (preferably in writing) between all proprietors should therefore be sought.

Click here to return to the UPC homepage

Find the right person

Find the office that suits you

Click here to view our offices

>