2025 Week 38
With our focus on the UPC, we’ve been reporting on cases where EPO oppositions and UPC actions are happening in parallel, particularly where the parties are able to play these proceedings off against each other for strategic advantage.
But what about looking at this from the other viewpoint? Where European patents are subject to EPO opposition proceedings, how likely is it that the patentee will extract their patent from the jurisdiction of the UPC by filing an opt-out? And what happens where the patent is opposed by more and more parties?
Of course, where the patentee has decided to select a Unitary Patent (UP), there’s no possibility of opting out from the UPC. No other court can have jurisdiction over a UP. But normal (‘classic’) European patents can, at present, be taken out of the jurisdiction of the UPC by filing an opt-out request.
EPO oppositions
In 2024 just over 2% of granted European patents were opposed (according to the EPO’s 2024 Annual Review). Some patents attract multiple oppositions, which is an indicator of their high commercial value. The patents which attracted the most opponents in 2024 feature in our article linked here.
Getting opposed and opting out
We wanted to better understand the extent to which patent holders are exposing their patents to the UPC, and the relationship (if any) with the opposition status of their patents. So we visualised the data for 2024.
*This chart was made using Flourish.
There’s a lot to unpack here.
No opposition filed?
If we look first to unopposed patents (the bottom bar in the chart), we can see that these are the vast majority of patents granted at the EPO each year and account for over 100,000 patents. About 45% of these are ‘classic’ European patents for which a UPC opt-out has been filed (green) which means that they do not come under the jurisdiction of the UPC. The remaining patents are under the jurisdiction of the UPC – about 35% are ‘classic’ European patents that have not been opted out (peach) and about 20% are Unitary Patents (dark orange).
For a relatively tiny number of opted-out patents the opt-out was later withdrawn (yellow), meaning that the patent previously wasn’t – but is now – under the jurisdiction of the UPC. The relative size of this bar segment for unopposed patents is so tiny as to be invisible – just 16 out of 111,323 patents at the time of writing this piece. The main reason a patent proprietor might choose to withdraw their UPC opt-out is to allow them to use the UPC to enforce their patent.
All of this shows strong uptake of Unitary Patents, and strong engagement with the UPC system, by users of the EPO, although many patent holders are still opting-out some or all of their patents.
Effect of one opposition filed … and of more oppositions filed
Next, if we start from the bottom bar of the chart and look upwards to compare with data for opposed patents, we can see some interesting trends emerging.
The green segment of the bar grows larger while the peach segment is squeezed out. This means that, for ‘classic’ patents, the proportion that are opted-out rises, while the proportion that are not opted-out falls.
One way of looking at this is that, for ‘classic’ European patents, the more that they are the focus of EPO opposition activity the more likely they are to have been opted-out. Why might this be?
Well, the holder of a patent that is evidently, or expectedly, the subject of EPO opposition might chose to opt-out of the UPC so as to shield it from a potential UPC revocation action. So they might file an opt-out after an opposition has been filed against their patent at the EPO, or they may already have a good idea before grant that the patent will be opposed and will file the opt-out before grant (for example where the patent is a member of a patent family that has already been opposed). They might be able to withdraw the opt-out later if they want to enforce the patent at the UPC.
Another interesting feature of the chart is that for the most commercially valuable patents (highly opposed – top bars in the chart) many proprietors chose the UP route whilst, at the same time, most of the ‘classic’ patents have been opted-out of the UPC’s jurisdiction. That is, the situation becomes rather binary. Why might this be?
Choosing the UP route can provide certain benefits, including cost efficiencies. On the other hand, going for a ‘classic’ European patent and opting it out from the UPC gives a proprietor flexibility. This is because it may be possible to withdraw the opt-out later for enforcement at the UPC.
We see this rather binary situation for more commercially valuable patents. They are either opted-out of the UPC or ‘locked in’ from the start (as UPs). This most likely indicates that the owners of some of the most commercially valuable patents just don’t see any advantage in the middle ground – the non-opted out ‘classic’ patent.
