Patent practitioners have long expressed concerns over the uncertainties in the proposed Unitary Patent and UPC system. One concern is about the interpretation of the provisions (UPC Agreement and Rules of Procedure) relating to the opt-out scheme for classical European patents and related supplementary protection certificates (SPCs) during the transitional period.
The UPC preparatory committee has now published an update on its website which provides guidance on this issue. Below are the recent questions with a link to the guidance.
Question 1: Does an opt-out under Article 83(3) UPCA affect only the exclusivity of jurisdiction, so that the UPC in fact retains a non-exclusive jurisdiction with regard to the opted-out patent?
The committee says that holders of classic European patents (or related SPCs) can remove their patents or SPCs entirely from any jurisdiction of the UPC. More details can be found here.
Question 2: Does the effect of an opt-out under Article 83(3) UPCA last only for the duration of the transitional period or for the whole life of the patent?
The committee says that an opt-out from the jurisdiction of the UPC lasts for the whole life of the patent. Its explanation also makes mention of the opt-out notification deadline during the transitional period. More details can be found here.
Question 3: What type of action can be filed with the national courts during the transitional period under Article 83(1) UPCA?
The shared competence a national court has during the transitional period is not limited. According to the committee: “The legislator’s objective with Article 83(1) UPCA was to give a choice of forum to the claimant during the transitional period regarding all actions which normally come under the jurisdiction of the UPC.” More details can be found here.
