RULE 5 - Lodging of an Application to opt out and withdrawal of an opt-out

Commentaires Casalonga

Overview

1. General considerations
1.1 The opt-out
1.2 What about the Unitary patents ?
2. Difference between opt-out and transitional period
3. The limited effects of the transitional provisions
4. Which kind of right can an opt-out cover ?
5. Who can apply for an opt-out ?
5.1. The specific situation of supplementary patent certificates
6. When is it possible to apply for an opt-out ?
7. How to apply for an opt-out ?
8. Where to apply for opt-out ?
9. Amendment of an incorrect Application for opt-out
10. Period of effectiveness of an opt-out
11. The effects of an opt-out
12. The withdrawal of an opt-out
13. Automatic and ineffective withdrawal of an opt-out
14. Information of third parties about opt-out and withdrawal
15. Effects of the withdrawal
16. Representation
17. Specific provisions before entry into force of the Agreement

1. General considerations

1- Article 32-1 of the Agreement defines the principle of exclusive competence of the Court including actions for infringement, actions for declarations of non infringement, actions for provisional and protective measures and injunctions as well as actions for revocation, counterclaims for revocations and all consequences of those actions including damages and compensations.

2- As from the date of entry into force of the agreement therefore, all those actions are exclusively handled by the Unified Patent Court (UPC). The National courts remain only competent for actions which do not come within an exclusive competence of the Court (Article 32-2 of the Agreement).

3- This exclusive competence applies to both types of European patents i.e. Unitary patents (European patents with unitary effect in all Contracting Member States) and European patents having a national effect in specific designated EPC Member States, including UPC Contracting Member States. Since the Unified Patent Court is a completely new jurisdiction, it was considered appropriate to leave the possibility of bringing such kind of actions based on European patents before National courts as it is the case presently, even after entry into force of the Agreement, for a certain period of time. During this period, it is expected that experience will be gained with the new court system and confidence will be progressively established.

4- The exclusive competence of the Unified Patent Court which is the basic principle of the Agreement shall remain, but only after a transitional period which is defined in Article 83 of the Agreement. Of course, this freedom of choice during the transitional period only applies to European patents and not to Unitary patents (European patents with unitary effect).

5- The duration of the transitional period defined in Article 83-1 is of seven years as from the entry into force of the Agreement. During this time period, parties will have the choice to bring an action for infringement or a revocation action of a European patent, before a National court instead of the Unified Patent Court (this is true for the proprietor of the patent in case of an infringement action as well as for third parties wishing to challenge the validity of a European patent). If a patent proprietor lodges an infringement action of a European patent before a national court, the defendant may lodge a counter claim for revocation of the European patent before that national court if the national procedure allows for this. The defendant or any other third party, may also lodge a revocation action before the UPC. In such a case, the national court may decide to stay the proceedings, depending on the circumstances.

6- It must be noted that Art 83-1 of the UPC Agreement does not mention other possible actions such actions for declaration of non-infringement or actions for provisional and protective measures and injunctions. It must therefore be concluded that those actions remain within the exclusive jurisdiction of the UPC even during the transitional period.

7- It must also be noted that Applications mentioned in the UPC Agreement and in the Rules of procedure, are defined within an Action and are therefore linked to said Action. For example, an Application for preserving evidence is linked to an infringement action. Such an Application may therefore be requested either before a national court or before the UPC during the transitional period, depending on whether the action on the merits is subsequently brought before the national court or before the UPC.

8- If an Application for preserving evidence is requested at the UPC, before engagement of the infringement action, the proceedings on the merits must be started thereafter before the UPC, within 31 calendar days or 20 working days, as stated in Rule 213-1 (which refers to Article 60(9) of the Agreement relating to preservation of evidence) to avoid nullity of the procedure for preserving evidence. Bringing the action on the merits before a national court in that case, would lead to the revocation or nullity of the preservation of evidence.

9- If, on the contrary, a request for preserving evidence is requested at a national court, following national law, before engagement of the infringement action, the proceedings on the merits must be started before that national court within a time period provided in the national law. Bringing the action on the merits before the UPC in that case, would lead to the revocation or nullity of the preservation of evidence.

10- The seven years transitional period can be extended, according to Article 83-5, for a further period of maximum seven years, following a decision of the Administrative council of the Court, taking into consideration the number of cases brought before National courts during the first seven years of the initial transitional period.

1.1 The opt-out

11- During the entire transitional period (possibly extended), a further option is provided. Article 83-3 provides namely for the possibility to opt-out from the exclusive competence of the Court. Contrary to Article 83-1 which concerns the normal transitional period and is limited to infringement actions and revocation actions, Article 83-3 clearly concerns the entire range of competence of the Unified Patent Court including therefore not only infringement actions and revocation actions but also other possible actions such actions for declaration of non-infringement or actions for provisional and protective measures and injunctions.

12- It must be reminded that, before entry into force of the UPC Agreement, any infringement or revocation action of a European patent, is to be brought before a national court applying national procedural rules. The court decision only applies in the designated country and any injunction to stop infringement can only be effective in this designated country. In the same way, a decision of revocation can only concern the National part of the European patent in question.

1.2 What about the Unitary patents ?

13- Upon grant of a European patent, a patentee may choose a Unitary patent instead of a European patent with national effects.Unitary patents are defined in EU Regulation No 1257/2012 of 17 December 2012. Only that Regulation applies to Unitary patents and it provides that enforcement of Unitary patents should be ensured through the establishment of the Unified Patent Court (see for example Paragraph 9 of the preamble of the EU Regulation).

14- Concerning substantive law, Article 5-3 of this EU Regulation refers, for enforcement of the Unitary patent, to the law on patents applicable in each participating Member State. This wording can be considered somewhat confusing. However, since the national law on patent in each Contracting Member State, refers to the UPC, this must be understood as indicating that substantive law for a Unitary patent, i.e. definition of infringement acts as well as any limitation of effects of the patent has to be found in the UPC Agreement.

15- In addition, enforcement of a Unitary patent is the exclusive task of the Unified Patent Court. It follows that enforcement of a Unitary patent can not be handled by a national court. In the same way revocation of a Unitary patent cannot be requested before a national court. The national court procedures are not applicable to a Unitary patent i.e. a European patent with a unitary effect.

16- It follows also from this construction, that no Unitary patent can be chosen until the Unified Patent Court Agreement has entered into force. The Judicial Court System is namely necessary as soon as a Unitary patent exists so that enforcement of this Unitary patent becomes possible.

17- As a consequence of this, none of the transitional provisions of Article 83 of the Agreement can apply to Unitary patents. This would namely mean involving the national courts. This includes the possible choice between national courts and the UPC during the seven years transitional period as well as the opt-out possibilities provided by Article 83-3 of the Agreement. All this does not apply to Unitary patents.

2. Difference between opt-out and transitional period

18- Instead of opting out, it is possible to apply the choice provided in Article 83-1 between national courts and UPC during the transitional period.

19- If no opt-out has been registered for a given European patent or patent application, the proprietor of said patent or patent application may, during the transitional period, decide to bring an infringement action either before a national court (with the geographical limitations already mentioned) or before the Unified Patent Court. Clearly the defendant has to defend himself before the court chosen by the proprietor of the European patent or patent application. This is equally true for an action relating to any supplementary protection certificate based on the European patent. As mentioned above, however, the defendant may also decide to bring a revocation action before the UPC while the infringement action is pending before the national court.

20- In the same way, third parties may decide to bring a revocation action either before a national court (with the consequence that the decision will only apply to the National part of the European patent in question) or before the Unified Patent Court (with the consequence that any revocation or limitation will be effective in all Contracting Member States of the UPC designated in the European patent in question). In case of such a revocation action filed by a third party, the proprietor of the patent is obliged to defend himself before the court chosen by the third party. The patent proprietor may lodge a counter claim for infringement before the national court, if this is allowed in this country. The patent proprietor may prefer to bring a parallel infringement action before the UPC. In such a case however, the UPC may decide to stay the proceedings according to Rule 295.

21- The situation for other actions (actions for declaration of non-infringement or actions for provisional and protective measures and injunctions) remain doubtful as mentioned above.

22- On the contrary if the proprietor of a European patent application or a European patent decides to file an opt-out application and this opt-out is duly registered, all infringement and revocation actions relating to this European patent application or European patent concerned by this opt-out, have to be brought before national courts. This means that third parties will not be able to request revocation before the Unified Patent Court and possibly obtain a revocation or limitation in all designated Contracting Member States at the same time. On the other hand the proprietor of the European patent or patent application cannot bring an infringement action before the United Patent Court as long as the opt-out is in force.

23- If the patent proprietor wishes to file an infringement action before the Unified Patent Court, he has to withdraw the opt-out which had been filed initially (unless a revocation action has already been brought before a national court, in which case the opt-out cannot be withdrawn as provided for in Art 83-4 of the Agreement) .

24- This means that the opt-out possibility appears to be a fairly flexible way of dealing with enforcement and validity questions, particularly favourable to patent proprietors.

3. The limited effects of the transitional provisions

25- The rights conferred in the UPC Contracting Member States by the patents and supplementary protection certificates are defined in the UPC Agreement.

26- The definition of the rights conferred by patents and supplementary protection certificates applies therefore from the date of entry into force of the Agreement in all Contracting Member States having ratified the UPC Agreement. If an action is brought before a national court following the possibility offered by Article 83(1) or if an opt-out has been registered, should the national court apply the provisions of the UPC Agreement with respect to the rights conferred and not anymore the provisions of the relevant national law ?

27- Substantive rights are defined in the Agreement in Article 25 (Right to prevent the direct use of the invention), Article 26 (Right to prevent the indirect use of the invention), Article 27 (Limitations of the effects of a patent), Article 28 (Right based on prior use of the invention), Article 29 (Exhaustion of the rights conferred by a European patent) and Article 30 (Effects of supplementary protection certificate).

28- The Preparatory Committee issued an interpretative note dated 29 January 2014 concerning the opt-out and the transitional provisions.

29- The Preparatory Committee notes that, according to the Vienna Convention on the law of treaties, a treaty shall be interpreted in good faith, taking into account the preparatory work of the treaty. The main goal of the UPC Agreement appears to be an harmonisation of substantive patent law by a single court. No parallel harmonisation of national patent law has been thought.

30- According to the Preparatory committee (§15 of the note), since national judges have no possibility to refer interpretative questions to the Unified Patent Court, application of the substantive patent law contained in the UPC Agreement by national courts would seriously bear the risk of diverging interpretation. Consequently, the Preparatory Committee is of the opinion that the competent national court should apply the national law to European patents or Supplementary Protection Certificates, in case of an opt-out or during the transitional period, if the case is brought before that national court.

31- This opinion can probably simplify the work of the national judges, national courts applying their usual national law. Whether this will lead to more harmonisation is however questionable : if the national courts would on the contrary all apply the same substantive patent law as defined in the UPC Agreement, more harmonisation could in fact be expected.

32- A diverging interpretation from the opinion of the Preparatory Committee remains therefore possible : Article 3 of the Agreement makes namely clear that the UPC Agreement applies to any European patent and Supplementary Protection Certificate “without prejudice of Article 83”. However, Article 83(1) defining the transitional regime, only mentions the possibility to bring certain actions before national courts without any detail on substantive law. Article 83(3) defining the opting out, only mentions the possibility to opt out from “the exclusive competence” of the Court. Nothing is mentioned about the applicable substantive law.

33- There is thus no express provision in the Agreement that would deter the national courts to apply the provisions of the UPC Agreement on the definition of rights instead of the national law provisions.

34- Concerning the provisions relating to the period of limitation of 5 years recited in Article 72 of the Agreement, it appears that this period of limitation relates to all forms of financial compensation and begins when the claimant becomes aware of the last fact justifying the action. National law provisions should remain applicable (for example if the national period of limitation is different from 5 years) if an action for compensation is engaged before a national court. As a matter of fact, Article 72 of the Agreement expressly states that this provision is not applicable where the Court applies national law, as provided in Articles 24(2) and (3) of the Agreement. This should be the same if national law is applied by a national court.

4. Which kind of right can an opt-out cover ?

35- The opt-out can relate to any published European patent application, any granted European patent (excluding Unitary patents), any supplementary protection certificate issued for a product protected by a European patent (excluding such supplementary protection certificates issued for a product protected by a Unitary patent).

36- The opt-out covers all Contracting Member States designated in the published European patent application or in the granted patent : it is not possible to limit the opt-out to only certain designated countries, unless a designation would have been positively withdrawn by the applicant before grant of the European patent. Rule 5-1(b) expressly mentions that the opt-out shall be made for all Contracting Member States, therefore excluding any opt-out which would cover only certain Contracting Member States designated in a published European patent application or in a granted European patent

37- In a note of may 2013 accompanying the 15th draft of the Rules of procedure, the Drafting Committee already noted that the provisions of Art 83 of the Agreement clearly provide that an opt-out « covers all designations owned by the proprietor in question » i.e. for a patent application as well as for a granted patent. The opinion of the Drafting Committee was in conformity with Art 34 of the Agreement according to which « Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect. »

38- A particular situation which must also be considered is the case where the same European patent or the same European patent application has different proprietors for different designated countries, as is authorized by the EPC (Articles 59 and 118 EPC as well as Rule 72 EPC which specifies that the European Patent Office may grant the European patent for different EPC Contracting States to different persons).

In that case, a registered opt-out will nevertheless cover all designated countries. As a matter of fact, Rule 5-1(b), specifies that : “an Application for opt out is made in respect of all of the Contracting Member States for which the European patent has been granted or which have been designated in the patent application”. This particular situation should be considered as similar to a co-ownership of the patent. Therefore, according to Rule 5-1(a), the opt-out application must, in that case, be lodged by all proprietors. Failure to do so will result in an invalidity of the registered opt-out.

5. Who can apply for an opt-out ?

39- Only the proprietor or applicant (all of them in case of multiple proprietors or applicants) can apply for an opt-out. It is not possible for a licensee to lodge an Application for opt-out. This is in contrast to the possibilities opened to exclusive or non exclusive licensees to bring an action before the Court, as provided in Art 47 of the Agreement. Even with the authorization of the proprietor, the exclusive licensee is not entitled to lodge an Application for opt-out.

40- If a licensee wishes to protect its activity by an opt-out, he will then have to contact the proprietor and ask him to lodge an Application for opt-out. The same is true for the case the licensee would like to withdraw an opt-out to be able to bring an action before the UPC.

It is advisable to provide specific clauses in a licensing agreement for organizing these opt-out options which are not available to the licensees in the same way as infringement actions.

41- A further difficulty may arise when the person lodging an application for opt-out is not the proprietor or applicant recorded in the register of the European Patent Office or the relevant National patent Office. This may be the case when the European patent application or the granted European patent has been assigned by the initial applicant or proprietor to another person and none of the parties has registered the assignment. This has no consequences on the validity of the patent since registration of a patent transfer is not compulsory.

Rule 5-1(a) in conjunction with Rules 8-5(a) and (b), solves this difficulty by providing that it is sufficient to show that the person lodging the application for opt-out is “entitled to be registered” as applicant of the European patent application or proprietor of the European patent under the law of the Contracting Member State in which the European patent has been validated. It must be reminded that, for countries like France, Germany or United Kingdom, where the validation does not require any translation, payment of renewal fees is equivalent to validation.

42- Consequently, when lodging an Application for opt-out, it will be sufficient (and required according to Rule 5-3(e)), to file a declaration stating that the person lodging the Application is “entitled to be registered in the national patent register”. Since the European patent usually designates several European countries, the declaration should precisely indicate that this entitlement relates to all designated States. Otherwise, it could be argued that the declaration is insufficient. And since a European patent may be transferred at any time to a person different from the initial applicant or patentee, in only some of the designated States, a situation where the entitlement to be registered in the various national patent registers is only valid for some of the designated States, may well occur.

43- The Registrar does not verify the correctness or completeness of the declaration. If however, an opt-out has been registered under the name of a person who was not entitled to be registered in the national patent register of one or more States designated in the European patent, a third party will have the possibility to request the Unified Court or a national court to order the Registrar to withdraw the registered opt-out.

5.1. The specific situation of supplementary patent certificates (SPC) :

44- If an SPC was granted before the Application for opt-out or the Application to withdraw an opt-out, the Application for opt-out must be made both by the proprietor of the European patent and by the holder of the SPC, if different from the proprietor. The holder of the SPC may for example be a licensee.

If the SPC is granted after the opt-out has been registered, the opt-out will apply automatically also to the SPC. The holder of the SPC, if different from the proprietor of the European patent, will have to simply accept the decision of the proprietor of the European patent. (see Rule 5-2(a) Since Applications for opt-out may be lodged before entry into force of the Agreement, (during a sunrise period of probably at least 4 months) this provision may be used by patentees to avoid having to inform the holder of any SPC of a decision to opt-out, as long as the SPC is granted after full entry into force of the Agreement.

45- In any case, the basic principle for opt-out and withdrawal of opt-out, relating to supplementary patent certificates (SPC), is that they follow the European patent to which they relate.

Therefore, an Application for opt-out or an Application to withdraw an opt-out, shall extend to any supplementary patent certificate (SPC) based on the European patent (Rule 5-2). It is not possible to opt-out for an SPC corresponding only to some parts of a European patent (for example to some claims of a patent) while keeping another SPC without opt-out.

46- For the same reason, no opt-out can be obtained for a supplementary patent certificate based on a Unitary patent.

6. When is it possible to apply for an opt-out ?

47- An application for opt-out may be lodged at any time after a European patent application has been published. It is possible to lodge an Application for opt-out as long as the patent is in force and even 5 years after its expiry since the status of limitation for an infringement action is of 5 years and a revocation action may still be filed within this time period.

However, in all cases, the application for opt-out must be lodged before the last day of the transitional period provided in Article 83 of the Agreement.

48- It is not possible to lodge an Application for opt-out before publication of a European patent application. This has no practical consequences, since it is not possible for a third party to engage a revocation action before the Unified Patent Court as long as the patent is not granted. Indeed, Article 32 of the Agreement relating to the competence of the Court does not provide for such an action (contrary for example to the situation in France where a revocation can be lodged on the basis of a pending patent application, the court simply staying the procedure until grant of the patent)

49- An opt-out Application must also be lodged before any action is engaged at the UPC (Rule 5-7). Such action may relate to the patent application (for compensation derived from provisional protection) or to the patent which is the object of the Application for opt-out. It may also relate to any supplementary patent certificate based on that patent, for example an action for a declaration of invalidity of any supplementary patent certificate based on the European patent. (Rule 5-2)

50- If a third party has filed a revocation action or an action for a declaration of non infringement before the central division of the Court, an opt-out is not anymore possible and will be automatically ineffective. The applicant for the opt-out, who is the proprietor of the patent or the applicant of the pending patent application, is not directly informed that the requested opt-out will never become effective. However, the revocation action must be directed against the proprietor of the patent (see Rule 42) who will therefore be informed of the revocation action and indirectly of the ineffectiveness of the opt-out applied for. In the same way, the Registrar will be informed of the engagement of the revocation action.

51- In the case of an action for a declaration of non infringement, the situation may be different. Such an action may be directed against a licensee entitled to commence infringement proceedings as it is possible according to Rule 61. Such a licensee can be, under specific circumstances, an exclusive licensee or even a non-exclusive licensee, according to Article 47 of the Agreement. A third party, or the effective proprietor would not be informed and could then request the Court to order the Registrar to withdraw the registered opt-out, where the proprietor has not been informed.

7. How to apply for an opt-out ?

52- Rule 5-3 lists the necessary content of an Application for opt-out :
Name, postal address and electronic address of each proprietor or applicant of the European patent or application and of the holder of any supplementary protection certificate, details and number of the patent or patent application (one Application for opt-out is required for each patent ; a list of patents and patent applications may however be indicated when using the IT system of the UPC), details and number of any supplementary patent certificate.

If the Application is not lodged directly by the proprietor or applicant of the European patent or application but by a representative acting on behalf of said proprietor or applicant, the name, postal address and electronic address of this representative must also be indicated.

53- If the representative is a lawyer or a European patent attorney with an appropriate qualification , as defined in Article 48 of the Agreement, no specific mandate or authorisation should be required when lodging the Application to opt-out.

54- A mandate for lodging the Application to opt-out is required and must be lodged with the Application if the Application is lodged on behalf of the proprietor or applicant of the European patent or application by a person who does not fulfils the requirements of Article 48 of the Agreement (see § 16 below)

55- If the person lodging the Application is not, at the time the Application is lodged, the registered proprietor on the relevant patent register i.e. on the national patent register of each designated States (in the case of an application for opt-out concerning a granted European patent) or on the European patent register, (in the case of an application for opt-out concerning a pending European patent application), a declaration must be lodged according to which the person lodging the Application is entitled, at the time the Application is lodged, to be registered as proprietor on all the relevant patent registers.

In case of several proprietors or applicants, a declaration is required for each proprietor or applicant.

If the Application to opt-out is lodged by a representative on behalf of the proprietor or applicant, the declaration may be made by the representative.
Of course, in that case the representative making the declaration engages his or her responsibility. It may me safer for the representative to have each proprietor or applicant execute the declaration.

56- In practice, the Application must be made on line using the specific official form of the Case Management System (CMS).

No court fee is required.

57- The Register makes no substantial checking of the Applications for opt-out. If an information is wrong or missing, the Application will still be entered in the Register. Only the courts, whether the national courts or the UPC, will be responsible for deciding on the validity of an opt-out, if a party subsequently challenges an entry in the Register.

8. Where to apply for opt-out ?

58- According to Rule 5-1, the Application to opt-out must be filed at the Registry. This obviously does not mean any sub-registry and it must be understood that the Application to opt-out or to withdraw an opt-out has to be lodged centrally at the Registry and not locally before any division of the first instance. This makes sense since an application to opt-out or to withdraw an opt-out is never filed during the course of a pending action.

No Application for opt-out shall be received or accepted by the European patent Office, even during the sunrise period before entry into force of the UPC Agreement.

59- The Application for opt-out has to be filed on line, using the form defined in the Case Management System.

9. Amendment of an incorrect Application for opt-out

60- According to Rule 5-5, the applicant for opt-out has the possibility of correcting the Application if some requirements are incorrect or missing. It is however doubtful that the Registrar will send to the applicant a notification indicating any insufficiency in the filed Application and give the applicant a chance to correct his initial Application. But this allows to correct any error made in an Application for opt-out or an Application for withdrawing an opt-out. And nothing excludes the possibility of proceeding to such a correction at any time after registration of the opt-out or the withdrawal of an opt-out, as long as no action has been lodged in the meantime before the Court. If a third party files a revocation action or an action for declaration of non infringement before the Court and argues that a registered opt-out is invalid, the proprietor can not anymore file a correction for that opt-out.

In any case, the effective date of the opt-out will be either the date the correct Application has been entered in the register or the date the correction has been entered in the register.

61- Rule 5 provides no control by the Registry. Wrong name of patent proprietor or failure to name all proprietors will lead to an invalid opt-out Application, which could be rejected by the Registry. In practice, the Registry providing no control, the registered opt-out will simply have no legal effect. In case of difficulties resulting from a mistake or a fraudulent statement, only the Court is able to correct such deficiencies.

62- A wrong number indicated is seemingly not possible to correct. If the number corresponds to a patent owned by the same proprietor, it is not possible to make a correction and the opt-out (or withdrawal) will be effective. If the number corresponds to a patent owned by another proprietor, the opt-out (and withdrawal) will be judged as ineffective by the Court or by a national court if the case is handled by a national court.

63- In addition, the decisions of the Registrar do not seem to be decisions or orders as stated in Rule 350. Therefore the provisions of Rule 220 relating to appeal against decisions and orders should not apply.

10. Period of effectiveness of an opt-out

64- When the UPC Agreement is in force, the legal effect of an opt-out begins with the entry on the Register. If a correction is lodged with the Register to amend the indications which have been lodged initially, the opt-out is only effective from the date of entry of the correction in the Registry.

65- If the opt-out relates to a granted patent and if the opt-out is not withdrawn, its legal effect ends only at expiry of the patent and 5 years after this expiry since an action for financial compensation can be engaged within the 5 years of the period of limitation provided in Art 72 of the Agreement.

If an opt-out relates to a published European patent application, the legal effect of the opt-out also begins with the entry on the Register.

The opt-out registered for a patent application will automatically continue with the corresponding granted patent as long as the patentee does not request a Unitary patent. The opt-out registered for a published patent application will therefore end up, as mentioned above, 5 years after expiry of the granted patent.

66- If a Unitary patent is requested, an opt-out which had been registered for the pending European patent application, will automatically be deemed as withdrawn. It is not necessary for the patentee to inform the Registry : In practice, the EPO is automatically informing the UPC Registry via the UPC IT Case Management System (ITCMS).

67- Some Contracting Member States having ratified the UPC Agreement could, in theory, remain outside the enhanced cooperation which allowed the issuance of the Regulation 1257/2012 on the Unitary patent. In such a case, the Unitary patent would not cover those countries, but the UPC would be competent for European patents designating such countries.

Could an opt-out duly registered for a European patent application continue for those countries not covered by the Unitary patent ? Rule 5-9 in its 18th version dated 15 March 2017 does not foresee this possibility (contrary to the preceding version of Rule 5-10), probably because this situation appears purely theoretical.
Nevertheless it could be the case for UK after leave from the EU (Brexit).

11. The effects of an opt-out :

68- According to the Drafting Committee, Art 83 of the Agreement together with Rule 5 must be interpreted in such a way that an opt-out registered for a given patent application or patent, forbids to bring any action concerning this patent application or patent before the UPC. Third parties have to file several revocation actions before national courts if the European patent designates more than one Contracting Member State. Whether the definition of the right remains governed by the provisions of the Agreement or by the relevant national law remains controversal (see point 3 above)

69- In view of the wording of Art 83-3 of the Agreement, some voices have expressed the idea that the effects of the opt-out were limited to the « exclusive character » of the competence of the Court. Accordingly, the parties would still have the option of choice between the UPC and the national courts, even after an opt-out.

70- The Drafting committee in its note after Rule 5 has rejected this idea and stated that the effects of an opt-out should be a complete ousting of the jurisdiction of the UPC and not only a lack of exclusivity. In fact, this complete ousting of the jurisdiction of the UPC as a result of an opt-out appears to be a reasonable interpretation of Art 83-3 of the Agreement, allowing to distinguish the effects of the transitional period as defined in Art 83-1, which already cancels the exclusivity of the jurisdiction, from the effects of an opt-out.

Since the effects of an opt-out is a complete ousting of the jurisdiction of the UPC, this means that a third party cannot bring an action for revocation of a patent or an action for declaration of non infringement of a European patent before the UPC as soon as the opt-out is registered.

The same is true for any other action falling under the exclusive jurisdiction of the UPC according to Article 32 of the Agreement, such as actions for provisional measures, injunctions or damages relating to a European patent or a supplementary patent certificate issued for a product protected by a European patent.

71- The effects of an opt-out are therefore broader than the simple provisions of the transitional regime of Article 83(1) of the Agreement which is limited to actions for infringement and for revocation of a European patent or a supplementary patent certificate.

Without an opt-out, a third party can always engage an action for a declaration of non infringement of a European patent before the UPC.

The transitional regime of Article 83(1) of the Agreement simply opens a possibility of choice to the patentee who may still want to engage an infringement action before a national court so as to avoid the risk of a decision of revocation of the European patent for all designated Contracting Member States, in case of a counterclaim for revocation made by the defendant.

However, according to the transitional regime, a third party is still free to choose the UPC for engaging a revocation action.

By contrast, the opt-out grants to the patentee a protection against an action for revocation engaged by a third party who is not allowed to bring the action before the UPC but only before the national courts.

72- In addition, the effects of the transitional regime will end up at the end of the transitional period of at least 7 years, while the effects of an opt-out can extend for a much longer period, until 5 years after expiry of the patent (see point 10 above).

12. The withdrawal of an opt-out

73- Rule 5-8 provides for the possibility to withdraw an opt-out which has been registered with respect to a patent or a patent application. The withdrawal shall apply compulsorily to all Contracting Member States. It shall also apply to any supplementary patent certificate based on the European patent. The withdrawal has to be made by lodging at the Register a specific Application to withdraw. Only the proprietor or applicant is allowed to lodge such an application for withdrawal of an opt-out already registered.

74- No fee is required for withdrawing an opt-out.

75- The Application to withdraw may be lodged at any time during the entire period of effectiveness of the opt-out, except if an action has already been brought before a national court, as stated in Art 83-4 of the Agreement. The same applies in the case this national court action is terminated, as expressly mentioned in Rule 5-9. In such a case, the Application to withdraw is ineffective even if it has been entered into the Registry. The action before the national court must be any action over which the UPC has jurisdiction : it can be an action for infringement, an action for declaration of non infringement, a revocation action, an action for provisional measures and injunction, an action relating to the use of an invention before grant of the patent or to the right based on prior use of the invention.

76- Other actions relating to patents and supplementary patent certificates, over which the Unified patent Court has no jurisdiction, may have been engaged or terminated before a national court without preventing an Application to withdraw of being effective : for example actions to claim property of a patent or actions relating to the scope and validity of patent licenses or assignment agreements

77- Consequently, the proprietor of a patent which has been once the subject of a national infringement or revocation action involving a certain defendant is not anymore able to bring an action for infringement before the UPC against another party.

78- The requirements for the Application to withdraw an opt-out are the same as for requesting an opt-out.

The Application to withdraw must contain the same indications as an Application to opt-out :

Name, postal address and electronic address of each proprietor or applicant of the European patent or application and of the holder of any supplementary protection certificate, details and number of the patent or patent application (one Application is required for each patent ; a list of patents and patent applications may be indicated), details and number of any supplementary patent certificate.

If the Application is not lodged directly by the proprietor or applicant of the European patent or application but by a representative acting on behalf of said proprietor or applicant, the name, postal address and electronic address of this representative must also be indicated.

79- A mandate for lodging the Application to withdraw an opt-out is required and must be lodged with the Application if the Application is lodged on behalf of the proprietor or applicant of the European patent or application by a person who does not fulfils the requirements of Article 48 of the Agreement. (see § 16 below)

80- If the person lodging the Application is not, at the time where the Application is lodged, the registered proprietor on the relevant patent register i.e. on the national patent register of each designated States (in the case of an opt-out registered for a granted European patent) or on the European patent register, (in the case of an opt-out registered for a pending European patent application), a declaration must be lodged according to which the person lodging the Application is entitled, at the time the Application is lodged, to be registered as proprietor on all the relevant patent registers.

In case of several proprietors or applicants, a declaration is required for each proprietor or applicant.

If the Application to withdraw an opt-out is lodged by a representative on behalf of the proprietor or applicant, the declaration may be made by the representative.

Of course, in that case the representative making the declaration engages his or her responsibility. It may me safer for the representative to have each proprietor or applicant execute the declaration.

81- As for an Application to opt-out, corrections are possible at the registry if some requirements fail or are erroneous in the application to withdraw an opt-out. Corrections however are only possible if no action has been engaged before a national court. Otherwise, any correction registered will be ineffective.

The withdrawal is effective from the date it is entered in the Registry, or the date any correction is entered in the Registry.

The Application to withdraw must be made on line using the specific form defined in the IT Case Management System.

In the same way as for an Application to opt-out, Rule 5 provides no control by the registry of the lodged Application to withdraw. For example, failure to name all proprietors in case of multiple proprietors should lead to an invalid Application to withdraw rejected by the registry or at least having no legal effect. This however, is not checked by the Registrar.

13. Automatic and ineffective withdrawal of an opt-out

82- Rule 5-9 relates to the situation of a Unified patent granted on a European patent application for which an opt-out has been lodged before grant of the patent.
Since it is not possible to opt out a Unitary patent, the already registered opt-out is deemed to be withdrawn i.e. automatically withdrawn and the Registrar enters the withdrawal into the register.

This withdrawal should take effect when the unitary protection takes effect i.e. when the request made by the patentee has been accepted by the European patent Office. The EPO has developed a specific software allowing an automatic transfer of the information concerning the Unitary patent protection into the ITCMS of the UPC.

83- A registered withdrawal is also ineffective if an action has been commenced before a national court prior to the entry of the Application to withdraw in the register or of any correction thereof. The action before the national court must be any action over which the UPC has jurisdiction : it can be an action for infringement, an action for declaration of non infringement, a revocation action, an action for provisional measures and injunction, an action relating to the use of an invention before grant of the patent or to the right based on prior use of the invention. (see point 12 above).

14 . Information of third parties about opt-out and withdrawal

84- According to Rule 5-11, the Registrar notifies the European Patent Office and the National patent offices of the Contracting Member States concerned of the entries in the register of any application for opt-out and any application for withdrawing an opt-out. Consequently, the European Patent Office will have the possibility of entering the opt-out condition of any pending European patent application or granted European patent in the European patent register. The same applies for national patent offices. Information of third parties will thus be obtainable not only at the Register of the Unified Patent Court but also at the European patent Register and at the National patent registers.

15. Effects of the withdrawal

85- The withdrawal of an opt-out is effective from the date of entry in the register. Therefore, from that date, the exclusive competence of the UPC is fully restored and any action concerning the European patent must be brought before the Unified Patent Court and not any more before a national court.

When an action filed before the UPC shortly after the withdrawal of an opt-out, relates also to compensation or damages, the Court shall nevertheless apply the UPC Agreement to determine the damages compensating infringement acts occurred when the opt-out was effective. (i.e. before the withdrawal of the opt-out).

86- The withdrawal of an opt-out is a non reversible step. As a matter of fact, according to Rule 5-10, after an effective withdrawal of an opt-out for a given patent or patent application, a new opting out is not anymore possible for this same patent or patent application.

16. Representation

87- Representation is not compulsory for lodging an Application for opt-out or an Application to withdraw an opt-out or any Application for correction.
Consequently, the Application for opt-out or to withdraw an opt-out, may be directly lodged by the patent proprietor or the owner of the patent application.

88- However, instead of being filed directly by the patent proprietor or the owner of the patent application, the Application for opt-out or to withdraw an opt-out, may be lodged on behalf of the patent proprietor or the owner of the patent application by an appointed representative who may be any person.

89- Rule 5-4 specifies three categories of such persons :

In a first category are representatives defined in Article 48 of the UPC Agreement i.e. lawyers authorized to practice before a court of an UPC Contracting Member State or European Patent Attorneys with appropriate qualifications such as a European Patent Litigation Certificate as defined in Article 48(2) of the Agreement. Those representatives may be appointed to lodge an Application to opt-out or an Application to withdraw an opt-out and no specific mandate or authorisation should be required therefore as indicated in Rule 5(3)(b)(i).

In a second category are European patent Attorneys as defined in the EPC or lawyers qualified in an EPC Contracting State, entitled to act as professional representative in patent matters and having their place of business in that State (Article 134(8)EPC).

In a third category are any other persons, including lawyers qualified in a country outside the EPC countries and national patent attorneys.

90- All representatives belonging to the second and third categories must provide a specific mandate from the proprietor of the European patent or applicant, authorizing the lodging of the Application to opt-out as indicated in Rule 5(3)(b)(ii) and this mandate is to be lodged together with the Application. The same applies for an Application to withdraw an opt-out.

17. Specific provisions before entry into force of the Agreement

91- According to the provisions of the Protocol of October 2015, certain parts of the UPC Agreement will come into force beforehand. This is the case for the Registry.

Therefore, as provided in Rule 5-13, it is possible to lodge an Application for opt-out and have it accepted by the Registry during a sunrise period, before entry into force of the UPC Agreement.

92- It seems that the Registrar, before accepting such an Application, will not inform the person having lodged the Application of any missing or incorrect requirement. Self checking is therefore important since it is always possible to lodge a correction with the Registry.

93- All Applications for opt-out duly registered before entry into force of the UPC Agreement will be treated as entered in the Registry on the date of entry into force of the Agreement.

Thanks to this provision, applicants of European patent applications as well as proprietors of European patents already granted have the possibility of subjecting their patent applications and patents to an opt-out as provided in Article 83-3 of the Agreement from the date of entry into force of said Agreement.

For example, a patent proprietor wishing to avoid a revocation action filed by a third party before the UPC against a certain patent, has the possibility to opt out this specific patent before entry into force of the Agreement.

94- In view of the broad wording of Rule 5-12, it seems possible, during the sunrise period, to lodge an Application to withdraw an opt-out already provisionally registered before entry into force of the Agreement. The previous application to opt-out is namely only effectively registered on the date of entry into force of the Agreement. Before that date, this opt-out does not legally exist.

95- All Applications filed during the sunrise period must be considered as purely provisional. Consequently, if an Application to withdraw an opt-out already provisionally registered, is lodged during the sunrise period, it will still be possible to lodge a new Application for opt-out concerning the same patent. And this new application for opt-out can be lodged before expiry of the sunrise period or afterwards, when the Agreement has come into force.

This is an exception to the normal situation already explained above (§15), according to which a new application for opt-out made after an Application to withdraw is normally not possible.