When can the opt-out be filed? The opt-out can be filed at any time during the transitional period (and during the sunrise period referred to above) but it must be registered, at the latest, one month before the transitional period expires. After the end of the transitional period, it will not be possible to opt out a classic European Patent and it will be subject to the exclusive jurisdiction of the UPC from that point.
How long does the opt-out last for? The opt-out will have effect for the rest of the life of the patent. What makes the opt-out even more attractive for patentees is that it need not have permanent effect. Having opted their classic European Patent out of the UPC, they can decide to opt it back in again. This means that a patentee may opt a classic European Patent out of the UPC to avoid the risk of a pan-EU revocation, but opt it back in again if it later wishes to enforce the patent on a pan-EU basis.
However, once litigation has been commenced in respect of a classic European Patent, this will ‘fix’ jurisdiction going forward. Proceedings brought by an exclusive licensee would also ‘fix’ jurisdiction in this way. Similarly, the actions of the patent owner in opting out a patent will impact on the exclusive licensee’s ability to commence litigation in its potentially preferred jurisdiction.
This means that, where an action has already been brought before the UPC (whether pending or concluded) in respect of a classic European Patent, that patent cannot be opted out of the UPC, i.e., an action before the UPC is an absolute bar to opting out. Further, where an action has been brought before a national court (whether pending or concluded) in respect of a classic European Patent, it will not be possible to withdraw an opt-out in relation to that patent.
Once an opt-out has been withdrawn, it will not be possible to opt that patent back out again.
What due diligence is required at this stage? In addition to conducting an assessment of their patent portfolio, patent holders should take steps to check that ownership records are accurate, and to consider whether co-proprietors need to provide consent, as well as the impact on exclusive licensees.