Unitary Patent & Unified Patent Court: FAQs

courts, and not at the UPC. In other words, the patent is removed from the jurisdiction of the UPC. It is not necessary to wait until grant to opt-out – a pending patent application can also be opted-out once published.

Q. Is it possible to opt-out individual patents, e.g. only the German part of the European part, while leaving other parts subject to the jurisdiction of the UPC?

A. No. An-opt out will be effective for the territories of all participating member states.

Q. Is it possible to opt-out a UP from the jurisdiction of the UPC?

A. No. UPs can only be litigated in the UPC.

Q. Why would you want to opt-out a patent?

A. This is a complex question. The UPC is a new court and there may be many reasons for not wishing to subject your patents to its jurisdiction. However, one of the main reasons for opting-out is that you do not wish your European patents to be subject to central revocation. In certain industries, for example the pharmaceutical industry, there has been some concern that the UPC could provide a forum for challenging and potentially revoking patents concerning “blockbuster” drugs across a large part of the EU in a single action. It has therefore been suggested that the pharmaceutical industry will opt-out all of its key patents.

Q. What will happen to the UPC if everyone opts-out all of their patents?

A. This is unlikely. Commentators have suggested that while the pharmaceuticals industry may opt-out its key patents, this will still leave a very substantial number of secondary patents, and the industry has expressed a desire to engage with the system with a view to shaping it. Furthermore, commentators suggest that other industries, such as the electronics and consumer goods industries, are far less concerned about opting-out their patents.

Q. When will I be able to opt-out my patent(s)?

A. We are currently in the “sunrise period”, which allows applicants to register opt-outs on their patents and pending applications.

Q. Will the UPC have jurisdiction over national (non-EP) patents in participating member states?

A. No. The UPC will have no jurisdiction over patents granted by national patent offices – only patents granted by the EPO.

Q. Will national courts in participating member states continue to have jurisdiction over classical patents granted by the EPO?

A. During a seven-year transitional period, the UPC and the national courts will have joint jurisdiction, unless the classical patents have been opted-out. After the seven-year transitional period, both classical and UPs will be under the exclusive jurisdiction of the UPC.

Q. How will the UP affect European patent applications which are currently being prosecuted?

A. There are many ways of delaying grant of European patent applications if you wish them to be eligible for the UP. The EPO has provided transitional measures to permit an early request for a UP, as well as to delay grant, once the applicant has received a Rule 71(3) communication (Notice of Allowance).

You can also continue to obtain protection in both UP and non-UP countries by filing directly at the national patent offices rather than at the EPO.

You can also register opt-outs for your pending patent applications as noted above.

Q. How will the UPC be organised?

A. The UPC will comprise a Court of First Instance, a Court of Appeal, and a

Registry. The Court of First Instance will consist of several regional and local divisions, and a central division, with its seat in Paris, France and a section in Munich, Germany. The German section will hear mechanical and weapons cases and the French section will hear telecommunications, electrical, and other cases. Before the UK withdrew its ratification of the UPC Agreement, another seat of the central division was to be located in London, England. This section was to hear a broad range of cases, including pharmaceutical, biotech, chemical, agricultural, and medical devices. At present it is not clear if the case load that would have come to London will be split between Paris and Munich or if a further seat of the central division will be created in an alternative city. Milan, Italy and The Hague, the Netherlands have been discussed as possible candidates. The Court of Appeal will be located in Luxembourg.

Q. Does the Court of Justice of the European Union (CJEU) have a role in the UPC system?

A. The CJEU is the ultimate arbiter of EU law, so is available to rule on questions of EU law referred to it by the UPC.

Authors Peter Thorniley

Jan Walaski jwalaski@vennershipley.co.uk