Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Expert AnalysisLocal Insights

Patent owners not rushing out of the upcoming Unified Patent Court

Sponsored by


Early predictions that most European patent holders would opt out of the jurisdiction of the Unified Patent Court have proved wide of the mark, report Henri Kaikkonen and Wouter Pors of Bird & Bird

The single most remarkable reform in the European patent landscape is imminent, as the Unified Patent Court (UPC) and the unitary patent (UP) system will come into force on June 1 2023.

The UPC will have jurisdiction not only over UPs but also over traditional European patents (EPs) unless they are opted out. Opt-outs may be filed already during the so-called sunrise period to ensure that the EP will not become subject to a day one central revocation action at the UPC, which could nullify the EP throughout all 17 European countries that will participate in the UPC system from its introduction.

While it was previously predicted that most of the EPs would be opted out due to the perceived uncertainty of the new court system and the risk of a central revocation action, the industry’s view has changed, and the number of opt-outs has been limited.

Influential factors for patent holders

The UPC’s Rules of Procedure form a solid basis for litigation for patent owners. An important step was the appointment of legally qualified judges, whose views are known from the case law of their national courts. The UPC aims to issue judgments within a year, covering countries where national courts are less experienced in complex patent litigation.

While the risk of central revocation remains, the advantage of a central infringement action that covers a market of over 300 million consumers is compelling. Only just over approximately 30,000 opt-outs have been registered, whereas, for example, in Germany alone the total number of patents in force in 2022 was over 900,000.

Furthermore, some EP owners may be following a wait-and-see strategy, meaning that they opt out now but might opt back in to the UPC.

An application to withdraw an opted-out EP is possible at any time, provided that an action concerning the EP in question has not been brought before a national court and that all owners of the opted-out EP so agree. Accordingly, if the patent owner prefers to wait and see, it is equally important to discuss the question of opting back in with other co-owners before making the final decision of opting out.

Another issue that might have caused some patent owners to stay within the UPC is that opt-outs are publicly searchable at the UPC’s registry.

Accordingly, the act of opting out might disclose strategic information about the value or strength of the EP, or about the likely enforcement activities of the patent owner. Of course, any such speculation may turn out to be false, but the act of opting out (or not) might trigger third parties to initiate national actions to ensure that the EP in question cannot be litigated before the UPC, which leads to the failure of any wait-and-see strategy.

With the sunrise period drawing to a close, European patent owners would do well to ensure that their UPC strategies are well planned and executed, and account for the most recent developments.

more from across site and ros bottom lb

More from across our site

Counsel from BMW and Finnegan explain how they got an NPE to sign a covenant agreeing not to sue the automaker ever again
The blue checkmark could be a good tool, but it’s unclear how widespread its adoption will be, say in-house sources
Sarah Harris, partner at Williams & Connolly, reveals how her team secured a copyright victory at SCOTUS and reflects on why the case matters
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
A Court of Appeal judge demanded respect for solicitor-judges after reprimanding a barrister for his 'unwise' words
Speeches at the UPC inauguration highlighted the gap between the unitary patent dream and the reality today
Sources with experience on both sides of the Atlantic believe hugely profitable US law firms may still take some convincing before agreeing to partner with a UK outfit
IP counsel urge the government to restrict safe harbour exceptions available to intermediaries and clear up doubts with the existing law
A New York lawyer could face sanctions after citing fake judgments generated by ChatGPT, but that doesn’t mean practitioners should shy away from AI
Klaus Grabinski told delegates at a UPC inauguration event that the proposed SEP regulation would limit access to justice