In an earlier post – Avoiding the unified patent court – Do our eyes deceive us? – we asked whether the transitional provisions of the unified patent court agreement (see Article 83 of the final text [previously Article 58]) meant that an applicant could opt out of the competency of the unified patent court during the transitional period and that the opt-out would continue throughout the life of the patent.

Since the transitional periods are planned to run until at least either 1 January 2021 or 1 January 2028 this interpretation of the unified patent court agreement would mean that, for European patent applications filed prior to the end of the transitional period, national courts could still have competence to hear patent cases until the 2040s!

In a statement on 18 February 2013, the Commission clarified their position and confirmed that, as suspected in our earlier post, the opt-out will last for the life of the patent.

The full statement from the Commission reads as follows:

“During a transitional period of 7 years, actions for infringement or for revocation concerning “classical” European patents without unitary effect can still be brought before national courts. A proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period will also have the possibility to opt out from the exclusive competence of the Court (unless an action has already been brought before the Court). To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The transitional period may be prolonged up to a further 7 years by the Administrative Committee (decision making body within the court system composed of one representative per Contracting Member State).”

Mark Richardson    14 March 2013