These notes provide more explanation about the information presented in Mewburn Ellis’ UPC Opt-Out Portal, and about the UPC opt-out process.
Information presented in the Mewburn Ellis UPC Opt-Out portal
You will have accessed the portal via a unique link which has been sent to you as our client. The portal shows information for the European patents that you, our client, have asked us to opt-out from the Unified Patent Court (UPC).
The front page lists all of the European patents you have instructed us to opt-out. Each row shows brief details of each patent, including a link to the EPO Register entry for the patent. The front page also indicates if we are aware of any Supplementary Protection Certificates (SPC) based on the European patent and whether the patent has more than one proprietor in one or more of the designated or validation states, or in respect of an SPC.
Please note that all information shown in the portal is taken from our records. It may therefore differ from information shown on the EPO Register, national registers or from your own data. There are several reasons why the data we hold may differ from data in these other sources, mostly reflecting our level of continued involvement with the patent after grant. As such, the data may be out of date and may not reflect the current situation.
The reason for presenting the information to you and asking you to check it is to ensure we have accurate and up to date data for use in the opt-out request. In order for the opt-out request to be effective the information included on the opt-out request must be correct at the time of filing the request. For this reason, we will not proceed to file an opt-out request until you have confirmed that the data presented in the portal (which we will use in the opt-out request) is correct.
How to check the information for each patent and associated SPCs
Clicking on each row on the front page takes you to a further page showing the bibliographic information we hold for that European patent. This further page shows the following information which we ask you to check and confirm is correct:
- The “EPC States” – being the states for which the patent was granted.
- The “EP Proprietor(s)” – being the proprietors of the patent at the time of grant of the European patent.
If this data remains correct for all states today please answer “Yes” where indicated and press Confirm.
Where the EP Proprietor(s) have changed since grant and this change is not shown
If one or more proprietors of the patent has changed since grant, for any or for all states, i.e. they are not the same as the “EP Proprietor(s)” indicated and we have not separately shown the change in proprietor under the heading “States with a different proprietor”, please answer “No” where indicated and enter brief details of the change in the text box provided. We will follow up with you to understand the change and update the information in the portal.
Where we have already been made aware that there has been a change of proprietor after grant in one or more states this will be indicated on the further page under the heading “States with a different proprietor” (this heading is only present where we are aware of a different proprietor in one or more states). This section will show the proprietor(s) of the patent for the state(s) indicated. Again, this information is taken from our records and may be incorrect or out of date. We ask you to check and confirm this information.
Where there are Supplementary Protection Certificates based on the European Patent
Where we are aware of any pending or granted Supplementary Protection Certificates (SPCs) based on a European patent that you have instructed should be opted out these are also shown on the further page.
When opting-out the patent we are required to identify each SPC and its proprietor(s) (called the ‘holder’). In this situation please check that the holder(s) indicated are correct for each SPC and that all SPCs based on the European patent are listed. Where they are correct please answer “Yes” where indicated and press Confirm. This will change the status from “To check” to “Complete”. We will then use this information when requesting that the patent (and SPCs) is opted-out from the UPC. If the information is incorrect or incomplete please answer “No”. This will change the status to “In Review” which will highlight the SPCs to us as requiring further investigation.
It is possible that we are only aware of some SPCs based on the European patent. If any SPCs are missing please contact the Mewburn Ellis partner in charge.
Further notes about the opt-out process
An effective opt-out request must identify the true proprietor(s) of the patent (and SPC, if applicable) at the time of the opt-out request for each state in which the patent was granted.
The true proprietor of the patent is the legal owner of the patent. This may not be the proprietor recorded on the EPO Register, on a relevant national register, or in our records. For example, the patent may have been assigned (for all states, or only for certain states) since grant. The assignment may or may not have been recorded at the respective national patent offices.
When filing the opt-out request we are required to declare on behalf of each proprietor and holder named on the opt-out request form that the proprietors and holders named are the true proprietors/holders. If the proprietors named on the opt-out request form are not the true proprietors the opt-out request may be deemed ineffective. This is why we are asking you to confirm that the proprietor and holder information we hold for each state of the European patent and for each SPC is correct. Once confirmed to be correct with you, we will use this information in the opt-out request.
Opt-out requests will not be substantively examined by the UPC on receipt. We understand that an opt-out request will be entered on the UPC register but will only be examined for compliance with the Rules of Procedure of the UPC if/when a third party attempts to bring an action before the UPC in respect of the European patent (including a national validation thereof).
An incorrect opt-out may be corrected by filing a request for correction, but the opt-out shall only be effective from the date of correction (Rule 5.5). The absence of substantive examination of opt-out requests indicates that any deficiency in an opt-out request may not be identified until an action is brought against the European patent. At this stage, filing a correction to the opt-out is unlikely to lead to the patent being considered opted out from the UPC because an action against the patent has already commenced – an opt-out having a date of entry of correction after commencement of an action before the UPC shall be considered ineffective (Rule 5.6). Therefore it will be important for opt-out requests to be correct when initially filed.
Where a patent or SPC has more than one proprietor (e.g. the patent has co-proprietors, or there are different proprietors for different states) it will be necessary to put in place a signed authorisation (called a mandate) for the opt-out from each proprietor.
If you, our client, are not the proprietor (e.g. because the patent is licensed to you) it will also be necessary to put in place a signed mandate for the opt-out from the proprietor(s).