Opting Out of the Jurisdiction of the Unified Patent Court
Our Services
Legal assessment of whether opting out is in your best interest;
Preparation and lodging of the opt-out or withdrawal with the UPC Registry;
Representation before the Unified Patent Court where applicable.
As the Unified Patent Court (UPC) becomes a central forum for litigation of European patents, patent proprietors and applicants must consider whether to remain under its jurisdiction or to opt out. The opt-out mechanism is a strategic legal tool introduced by Article 83 of the Agreement on a Unified Patent Court (UPCA), allowing European patent holders to exclude their patents from the UPC’s exclusive competence during the transitional period.
Who Can Opt Out?
The opt-out is available to:
Proprietors of European patents granted before or after the UPCA’s entry into force, provided the patent has not lapsed;
Applicants for pending European patent applications;
Holders of supplementary protection certificates (SPCs) based on such European patents.
The opt-out must be registered with the UPC Registry and is effective upon entry into the register—provided no action has been brought before the UPC beforehand.
Key Considerations
All Proprietors Must Agree: If a European patent is owned by multiple proprietors for different national parts, all of them must jointly file the opt-out application. This interpretation was confirmed by the UPC Court of Appeal in case law UPC_CoA_79/2024, which held that a valid opt-out requires that all proprietors of all national parts of a European patent act together.
Representative Required: The opt-out request must be lodged by a person authorized under Article 48 UPCA—typically a qualified European patent attorney or other UPC representative.
Scope of the Opt-Out: The opt-out applies to the entire European patent (including all national validations), not individual countries. It also automatically covers any SPCs based on the patent.
Withdrawal of an Opt-Out: An opt-out can be withdrawn later, thereby submitting the patent to the UPC’s exclusive jurisdiction. However, once withdrawn, no further opt-out is possible. This was confirmed in UPC_CoA_156/2025, where the Court clarified that the withdrawal of an opt-out brings the patent entirely back under UPC jurisdiction without any limitation.
Legal Advice by a European Patent Attorney
Deciding whether to opt out of the Unified Patent Court’s jurisdiction involves weighing litigation risks, enforcement benefits, and strategic considerations. As a European patent attorney and UPC representative, I provide tailored legal guidance and can file opt-outs on your behalf.
Procedure for Opting Out of the Jurisdiction of the Unified Patent Court (UPC)
Opting out a European patent or patent application from the jurisdiction of the Unified Patent Court is a strategic legal action permitted during the transitional period under Article 83 of the UPC Agreement (UPCA). Below is a step-by-step outline of the procedure:
1. Identify Eligible Titles
You may file an opt-out for:
A granted European patent not yet lapsed;
A pending European patent application;
Any Supplementary Protection Certificate (SPC) based on a European patent (if not based on a Unitary Patent).
Note: The opt-out applies only to European patents without unitary effect.
2. Confirm Proprietorship
Verify and confirm the correct and complete chain of title:
All registered proprietors/applicants must consent;
For co-owned patents/applications, all proprietors/applicants must act together;
If the applicant/proprietor is not yet recorded in the national or EPO register, a declaration of entitlement must be prepared (Rule 5.3(e) RoP).
3. Appoint a Qualified Representative
Opt-outs must be lodged through a UPC representative, typically a European patent attorney or a lawyer authorised under Article 48 UPCA.
4. Prepare the Opt-Out Application
The opt-out request must include:
Name and address of all proprietors/applicants and any SPC holders;
Details of the patent/application (EP publication number, filing number);
Details of any SPCs (grant number);
Name and address of the authorised representative lodging the application;
Any necessary declarations of entitlement.
5. File the Opt-Out via CMS
Submit the application via the UPC Case Management System (CMS). Once the request is processed and registered, the opt-out becomes effective as of the registration date, unless:
An action before the UPC has already been filed, in which case the opt-out is invalid.
6. Maintain Record of the Registered Opt-Out
Keep a record of the opt-out registration entry, including timestamp and confirmation from the Registry.
7. Optional: Withdrawal of the Opt-Out
At any time, unless an action has been filed before a national court, the opt-out may be withdrawn (Article 83(4) UPCA). Once withdrawn:
The patent/application is subject again to the exclusive jurisdiction of the UPC;
No further opt-out is allowed.
Important Notes
A single opt-out applies to all Contracting Member States where the European patent is validated.
Opt-out must be filed no later than one month before the end of the transitional period.
Opting out is not possible for Unitary Patents or SPCs based on Unitary Patents.