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Getting ready for opt-outs!

Getting ready for opt-outs!

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28 October 2022

The Unitary Patent (UP) and Unified Patent Court (UPC) are expected to start on April 1, 2023. The system will initially apply to 17 EU states, including the heavyweights Germany, France, and Italy, as well as Benelux and others (herein, ‘UP space’).
 
Unitary protection cannot be requested for EP patents granted before the UP system starts. However, “classic” EP patents and corresponding supplementary protection certificates (SPCs) can become subject to revocation actions before the Unified Patent Court (UPC) – with the risk of invalidation for the whole ‘UP space’ – unless they are opted-out from the exclusive competence of the UPC. Requesting opt-outs will be possible during a transitional period of 7 (+7) years from the start of the UPC, and the opt-outs will apply for the whole lifetime of the patent or SPC. Attractively, an opt-out may be later withdrawn, allowing the proprietor to initiate an infringement action before the UPC for all Contracting Member States in which the patent has an effect.
 
A 3-month sunrise period expected to start on January 1, 2023 will allow proprietors and applicants to request opt-outs already before the UPC becomes operational, such that their “classic” EP patents can be timely insulated from the threat of central revocation by the UPC.
 
For those EP patents where we are your representatives of record, we will be contacting you in advance of the sunrise period to obtain your instructions on the desirability of opt-outs. Because an opt-out requires the consent of all actual proprietors of the patent and possibly the holders of the corresponding SPCs, you will need to inform us who effectively owns the patent across the ‘UP space’, including their names and addresses, and confirm that all co-owners agree with the opt-out. If the actual proprietors differ from those currently recorded in national patent registers, for example because some transfers were not recorded, an additional declaration will be needed.
 
You should also check your licensing contracts to evaluate to what extent your licensees may need to be consulted on, or may even control, the decision to opt-out the licensed patent.
 
We at De Clercq & Partners will then assist you to timely lodge applications for opt-out, including “bulk” opt-outs.
 
Please visit our website for a lot more information on UP and UPC and contact our professionals at info@dcp-ip.com in case of further questions.

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