With the UPC sunrise period due to start on 1 January 2023, the patent profession is anticipating filing many advance opt out requests in respect of their clients’ existing EP patents.

However, is there a flaw in the opt out rules that means some EP patents will require a lot more work before they can be opted out or even make it impossible to opt some patents out?

Rule 5(1)(b) of the UPC Rules of Procedure states (emphasis added):

The Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application.

It is also noted that the draft opt out template on the UPC case management system includes a section identified as “Country abbreviation”.

It therefore is clear that opting out a granted EP patent will require the owner/representative to specify a list of countries as part of the opt out procedure.

What countries need to be specified however?

One reading of R5(1)(b) RoP above is that an opt out request needs to be made in respect of all states that the granted patent covers. On grant that will be, usually, 38 EPC states (and in due course 39 EPC states).

There is nothing in R5(1)(b) RoP that appears to limit the opt out request to states in which validation occurs* and so we appear to be left with the conclusion that the opt out template document needs to list ALL the states that the granted patent was valid in on grant.

This interpretation seems to lead to some unfortunate consequences.

For example, if an EP patent grants, is then subsequently validated in, for example, 6 EP states and those validated states are then later assigned to a new owner, how should the opt out request be completed? Does the current representative need to get consent of the current owner for the 6 validations plus the consent of the previous owner for the 32 validation states that were not selected?

IPcopy’s view is that this is indeed what the owner/representative will need to do since there appears to be no legal basis that only the new owner of the 6 validations needs to consent to the opt out.

Although the above issue will not apply for cases that have had the same owner throughout, any cases that have changed hands after grant have the potential to cause a huge headache.

At the very least it appears that additional consents will need to be secured but this could be difficult if the previous owner is uncooperative or even impossible if they no longer exist.

Hopefully further clarification will come but without solid legal foundations would any such clarification remove this problem?

The hurdles being placed in front of owners and representatives seem to keep coming. Prepare for a bumpy New Year!

Mark Richardson   24 October 2022

* Note that Rule 5(1) RoP explicitly allows expired EP patents to be opted out so arguing that countries that weren’t validated can be ignored doesn’t seem possible. Also note that, even if there was a rule/statement that opt out requests only applied to validated states then “ghost validations”, in which a granted patent is deemed in effect in a number of EPC contracting states without any action needing to be taken until the first post grant renewal rolls round, would play merry hell on the process!