For a transitional period of at least seven years from 1 June 2023, an action for infringement or for revocation of a European patent validated in any of the contracting states, or an action for infringement or for declaration of invalidity of an SPC issued for a product protected by a European patent validated in any of the contracting states, may still be brought before national courts or other competent national authorities. A proprietor of, or an applicant for, a European patent granted or applied for prior to the end of the transitional period, as well as a holder of a SPC issued for a product protected by a European patent, shall have the right to opt out from the exclusive competence of the UPC. Where the proprietor elects to opt out, the UPC will have no jurisdiction concerning any litigation related to their specific application, patent or SPC.
It is not possible to opt out if there is already an action that has been brought before the UPC. It is therefore important that proprietors of European patents decide on whether to file an opt-out or not. The opt-out will last for the patent's lifetime unless the proprietor of the patent decides to withdraw their opt-out. Such withdrawal may be done at any time unless an action has already been brought before a national court. There are in particular two features of the UPC which proprietors considering whether to opt out should consider.
A key purpose of the UPC is to provide a system delivering proceedings that are organised in a swift and cost-effective manner. Based on the RoP, the proceedings shall be conducted in a way which will normally allow the final oral hearing on the issues of infringement and validity to take place within one year of commencement . This year will include a three month deadline for the respondent to serve a statement of defence following the initial statement of claim. This is, compared to national patent law proceedings, rather tight timeframe.
Whilst the short timeframe might be efficient and advantageous for proprietors, equally they may present challenges as patent proceedings often require extensive documentation/disclosure, preparatory and judicial work. Parties without a legal in-house department and/or sufficient capacity may find the short deadlines to be very demanding, especially in cases where the counterpart is well-prepared and has plenty of resources. There is therefore a risk that the short timeframe may have a negative impact on the result of the proceedings, particularly if the party has not prepared for the proceedings in advance.
The UPC system is brand new and involves new procedures for the settlement of disputes. There will always be an inherent risk in the unpredictability of new procedures, especially if the party involved is not well prepared for, inter alia, the short deadlines and efficiency of the proceedings.