22/05/2025
All granted European patents will automatically fall under the jurisdiction of the Unified Patent Court in respect of UPC Participating countries, unless the European Patent is “opted out”, in which case the separate national courts retain jurisdiction for questions such as patent enforcement and validity.
For patents granted in countries that are participating in the UPC (such as France and Germany), the question of whether to stay opted in, or to opt-out, will depend on the preference of the patent holder, and will be based on any desired patent strategy.
However, for European patents that are only validated in non-UPC member states (such as the UK, Spain, Norway), there is still a question of whether an opt-out is beneficial or even necessary. Below we consider some important aspects around opting out European patents that are validated exclusively in non-UPC member states.
When Opting Out May Seem Unnecessary
At first glance, if a European patent is only validated in countries that are not participating in the UPC, filing an opt-out might seem unnecessary. This would be the case if a European patent was validated in countries such as the United Kingdom, Spain, or Poland. Since these countries fall outside the jurisdiction of the UPC, one could reasonably assume that no action is required.
Why an Opt-Out Might Still Be Worth Considering
However, the situation is more nuanced:
- Automatic Validation in UPC Member States: Some UPC and European Patent Organisation (EPO) member states automatically validate a granted EPO patent without any action required by the patent holder. France and Germany are examples where an EPO patent is automatically effective unless actively withdrawn before grant. If a patent holder does not file an opt-out, a third party could potentially initiate an invalidity action for the EP patent before the UPC based on these automatic validations.
- Future Expansion of the UPC: Countries not currently participating in the UPC may join in the future. Should this happen, the UPC would automatically gain jurisdiction over any existing validations in those countries unless an opt-out has already been filed. An early opt-out can act as a protective measure against this potential jurisdictional shift.
Strategic Recommendations
Given these complexities, patent holders may consider the following options:
- File an Opt-Out: This removes the possibility of the UPC having jurisdiction over your European patent validations, now or in the future.
- Withdraw Designations: If the only concern is automatic validation in UPC countries like France or Germany, one strategy is to withdraw those designations before the EPO grants the patent. This ensures the patent won’t automatically take effect in those jurisdictions.
Conclusion
Even for patents validated only in non-UPC countries, an opt-out may offer a strategic advantage, particularly as the UPC evolves and expands. Early, proactive planning helps ensure that patent holders retain control over the jurisdiction governing the validity of their rights.
As always, please contact us to discuss an approach that fits your specific portfolio and business needs.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
