Opt-out: Do I prefer my patent portfolio to operate in the new UPC system or is it more appropriate to remain in the classical European system?
Applicants and owners of European patents can exclude the jurisdiction of the Unified Patent Court (UPC) via an opt-out declaration. The request is not to be filed with the EPO but with the UPC via the related case management system. When the opt-out declaration is filed, the national courts retain exclusive jurisdiction. As long as no actions (infringement action, revocation action) are pending before the national courts or before the UPC, an opt-out declaration can be filed.
The opt-out declaration can be filed during a transitional period of seven years, extendable to further seven years, after the entry into force of the UPC. The opt-out declaration can be revoked via an "opt-in" declaration. After the transitional period, only the UPC is responsible for European patents.
Important to know: As long as no opt-out declaration is filed during the transitional period, Art. 83 UPC opens a kind of "forum shopping" for classical EP bundle patents, which means that actions can be brought both before the national courts and the Unified Patent Court.
Note: Three months before the UPC enters into force, in the so-called "sunrise period", i.e. from March 1, 2023, patent holders can already submit an opt-out declaration ahead of time.
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