Unified Patent Court (UPC) FAQS – who is entitled to file an opt-out request?

The delay of the opening of the Unified Patent Court (UPC) gives us some additional time to reflect on the topic of opting-out EP patents from the UPC’s jurisdiction. In this Q&A series, we will look at the questions we have been asked the most and give our views.

Who is entitled to file an opt-out request?

The general answer is that the true proprietor of an EP patent or the true applicant of an EP patent. But who exactly is the true proprietor/applicant?

The true proprietor/applicant is the legal or natural person that is entitled to be registered in the national patent register (see Rule 5.3(e) or Rules 8.4 and 8.5 RPUPC). In many cases, this will be the proprietor/applicant named in the European patent register. However, it is not uncommon that EP patents or applications are transferred, sold, or purchased without the change in ownership being updated in the EPO register. In these cases, the true proprietor/applicant may not be the proprietor/applicant recorded in the European patent register. A discrepancy between the actual ownership and the entry into the register needs to be declared in the opt-out request.

In practice, the determination of the true proprietor/applicant can be complicated. We see two main reasons for this.

Firstly, the true proprietor/applicant needs to be known. This needs to be determined for each of the national validations of the EP bundle patent. In a complex conglomerate of corporations, this may not always be easy to do!

Secondly, the transfer of ownership is governed by the national law of the true proprietor/applicant, unless the agreement governing the change in ownership says otherwise. Consequently, determination of ownership may be anything but a straightforward exercise. For example, in some jurisdictions, there is the concept of a “beneficial owner” who, under certain circumstances, may be entitled to be registered on the patent register even though the beneficial owner does not directly own the patent/application. So there is no one-size-fits-all approach for the determination of the true proprietor/applicant. Rather, any transaction that may be relevant needs to be assessed against the applicable national law in order to correctly determine which company, under the national law, is entitled to be registered as a patent proprietor.

Some companies plan to opt out tens, hundreds or even thousands of patents and applications within the sunrise period. For those who have similar plans but have not yet looked into who currently owns each patent or application in the portfolio, it is high time to check for any transactions and their relevance in view of the applicable national law. This can turn out to be a cumbersome process and reveal lots of surprises in practice. In some cases, prioritising those patents that really need to be opted-out might be expedient.

How can we help?

If you have any questions about opting-out of the UPC, or any other UPC questions to add to the series, please get in touch with the team here.