Opt-out (UPC)

An opt-out removes an eligible conventional European patent or application from the jurisdiction of the Unified Patent Court under the transitional arrangements in Article 83 UPCA. The initial transitional period runs for seven years from 1 June 2023 and may be extended under the Agreement. A European patent with unitary effect cannot be opted out.

Effect of an opt-out

A valid opt-out prevents the patent from being enforced or centrally revoked before the UPC while the opt-out remains effective. National courts retain jurisdiction over the relevant national parts: for the French part, patent litigation lies within the jurisdiction of the Paris Judicial Court.

An opt-out generally continues for the life of the patent, including after the transitional period, unless validly withdrawn. Related supplementary protection certificates and the identity of their holders must also be considered when preparing the filing.

Conditions and filing

An opt-out is not available once an action concerning the patent has already been brought before the UPC. The applicants must verify ownership, identify all necessary proprietors and comply with the Registry’s filing requirements. A register entry should not be assumed to cure a defect in entitlement or authorisation.

Withdrawing an opt-out

An opt-out may be withdrawn subject to the conditions in Article 83 and the Rules of Procedure. In particular, a national action already brought in respect of the patent can prevent withdrawal. A patent cannot be opted out again after the opt-out has been withdrawn.

The decision is therefore more than an administrative preference. It involves the risk of central revocation, the possible advantages of enforcing across several territories in one action, existing litigation and the commercial importance of the patent.

Practical significance

Portfolio reviews should identify patents for which a central challenge would create particular exposure and those for which UPC enforcement may offer a substantial advantage. The analysis should be revisited before an action is filed, since litigation can restrict the options that remain available.

For the underlying framework, see the UPC Agreement and the entry on patent revocation.

Related resources

UPC Litigation Watch · Unified Patent Court

Dhenne Avocats represents clients in patent disputes before the French courts and the UPC. Discuss a dispute with the firm.

This glossary entry provides general information and is not advice on an individual matter.