Following the UK government’s perhaps surprising decision to ratify the Agreement on a Unified Patent Court (UPC Agreement), the Preparatory Committee has indicated that it expects the agreement to enter into force (and for the Court to become operational) in December 2017.

One of the key considerations of this announcement is that it also potentially sets a date for the “sunrise period” in which owners of European patent rights (which include granted patents and pending patent applications) will be able to opt their patent rights out of the UPC Agreement before it enters into force. The sunrise period will be at least three months before the UPC Agreement enters into force and so is expected to commence in September 2017. The ability to opt out of the UPC is part of transitional arrangements which will last an initial period of seven years following the entry into force of the Agreement. If a European patent is not “opted out” it will automatically be under the exclusive jurisdiction of the UPC.

There are both advantages and disadvantages of opting out of the UPC. A perceived benefit is that it will not be vulnerable to central attack through the Unified Patent Court (it could, however, still be challenged using the existing Opposition procedure at the European Patent Office). A possible downside is that there may be considerable time and resource associated with the process of opting out some or all of a European patent portfolio. If a patent right is not opted out during the sunrise period, it will still be possible to opt out during the seven-year transitional period which starts from the date of entry into force of the UPC Agreement provided that no action has been brought before the Unified Patents Court with respect to the patent right.

Furthermore, it will also be possible for any European patent right that has been opted out of the UPC Agreement to be withdrawn from the opt-out at any time (i.e. it can be opted into the UPC Agreement) provided that no action has been brought before a national court in connection with the patent right.

At this stage, it is important for owners of European patents and patent applications to review their portfolios to determine whether any should be opted out of the UPC Agreement during the sunrise period in order to avoid the possibility of an unwanted challenge before the Unified Patent Court.

If you would like further information about opting out of the UPC Agreement, or require assistance with the opt-out process, please contact one of the Secerna attorneys.