Considerations for exercising the opt-out
- A single action before the UPC’s Central Division could lead to the revocation of the patent. Therefore, a patentee might want to opt-out the “crown jewels” of their patent portfolio. This would mean that a patent would have to be revoked in the national courts across all validated member states.
- If EPs are opted-out, only the national courts have jurisdiction; you maintain the status quo.
- In the beginning, the UPC will be an unknown and untested forum. One concern we hear consistently from patentees about the UPC, is about the quality and consistency of the judgments across all Local, Regional and Central Divisions.
- There is no fee for opting-out your patents but there are likely to be administration costs in terms of considering strategy and ensuring that the opt-out is validly implemented across a portfolio.
- Provided that there is no ongoing national litigation, you can withdraw an opt-out if you want to take advantage of the UPC at a future date (although a subsequent second opt-out will not be possible).