Starting from the inauguration of the Tribunale Unificato dei Brevetti (TUB – Unified Patent Court, UPC) on June 1, 2023, European patents automatically fall under its jurisdiction, unless owners take action to exclude such jurisdiction through an opting-out procedure.
Any European patent that is opted-out can only be challenged before national courts. Conversely, if no opt-out request is filed, the TUB and national courts have concurrent jurisdiction for the European patent and any associated Supplementary Protection Certificates (SPCs) in the participating Member States. This means that enforcement or third-party actions can take place indifferently before the TUB or in one or more national courts.
Opt-out is therefore the instrument provided for by the TUB Agreement to allow owners – during the so-called sunrise period, i.e., the transitional period of 7 years from the entry into force of the TUB, extendable by a further 7 years – to exclude European patent applications, "classic" European patents, and SPCs from the jurisdiction of the TUB, provided that no proceedings have been initiated before the Unified Court in relation to the patent in question. In this regard, the TUB specified in CUP&CINO v Alpina Coffee Systems (UPC CFI 182/2023) that an application for a preliminary injunction was sufficient to render a subsequently filed opt-out invalid.
Regarding Unitary Patents (UP), these are subject exclusively to the jurisdiction of the TUB and therefore cannot be the subject of an opt-out.
The opt-out – if correctly filed and not subsequently withdrawn – excludes the jurisdiction of the TUB over the patent for its entire duration.
If the jurisdiction over a patent application is excluded, the opt-out will automatically take effect also against the granted patent or any associated SPCs. However, if a request for unitary effect is filed within one month of the patent grant, such a request essentially nullifies the effect of the opt-out.
It is also possible to opt-out for patents or SPCs that have already expired. Indeed, this may be necessary if an SPC has been granted in relation to an expired European patent. In such a case, the owner of the SPC may wish to exclude the jurisdiction of the TUB, with the consequence that the underlying expired patent must also be opted-out.
It is worth noting that opt-out requests must be submitted to the TUB Registry available online through the Case Management System (CMS). No official fee is required for this procedure.
Who can file an opt-out request?
The opt-out request must be filed by the owner or applicant of the European patent or by their representative, who must, however, be a representative registered with the TUB or a person authorized through a specific power of attorney.
Such a request will be effective from the date of entry in the TUB registry.
In case of errors, an opt-out can be corrected. However, any corrections will be effective only from the date on which they are accepted by the TUB Registry, and therefore do not have retroactive effect.
In the case of multiple co-owners or applicants, the intention to file the opt-out must be shared by all, and all owners/applicants must be indicated in the request. Failure to list all interested parties will invalidate the opt-out request, with the consequence that the TUB may be seized for disputes relating to the co-owned patent.
As far as licensees are concerned, they are not guaranteed the possibility of requesting an opt-out. It would therefore be advisable for licensees, if interested in opting-out the patent they hold a license for, to take steps to review their license agreement regarding the management of the opt-out.
Re-entering the UPC jurisdiction
Pursuant to Articles 83(3) of the TUB Agreement and 5(8) of the RoP (Rules of Procedure), European patents subject to an opt-out can be returned to the jurisdiction of the TUB through the withdrawal of the opt-out, provided that no proceedings have been initiated before national courts. This was confirmed by the TUB in AIM Sport Vision v Supponor (UPC_CFI_214/2023).
It should be considered that a European patent or patent application cannot be excluded twice, and therefore the withdrawal of an opt-out application is irreversible.
The opt-out will take effect from the moment of entry in the TUB Registry.
To opt-out or not to opt-out: pros and cons of excluding the TUB jurisdiction
The opportunity to exercise the right of opt-out depends on a plurality of factors to be assessed on a case-by-case basis, taking into account the type of activity carried out, the markets of interest, the file history of the patent, and the State where the patent owner is based.
For the patent owner, opting out might be the preferable option considering the costs of a trial before the TUB and the territorial scope of the effects of its decisions.
Indeed, the fact that TUB decisions have effects in all contracting countries exposes the patent owner to the risk of facing counterclaims for patent revocation that could lead to the limitation or full revocation of the patent, with efficacy – precisely – in all Member States participating in the TUB Agreement.
An opt-out could, however, be inconvenient in some cases, preventing the possibility of enforcing – with a single judicial initiative – a European patent in all Member States of the TUB Agreement, resulting in savings in time and costs compared to launching individual actions in multiple States.