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Unified Patent Court – preparatory committee gives opinion on opt out
The preparatory committee for the European Unified Patent Court (UPC) has given its opinion on one of the more controversial aspects of the court agreement, namely the opt out provision.
The opt out allows for non-unitary European patents, i.e. the type of European patent currently available, to be removed from the UPC by a written request. This will have the effect that the patent is dealt with by the national courts rather than the UPC.
There has been some debate over the exact effect that the opt out will have on a patent. One school of thought holds that the UPC agreement will still apply to opted out patents, even though they will be dealt with by national courts. This would have the effect that national courts would have to apply the provisions of substantive patent law contained in the agreement rather than their own national law.
The preparatory committee has rejected the above idea however. In the committee’s opinion, opted out patents will be dealt with by national courts under national law in the same way European patents are currently dealt with. The agreement will have no effect on opted out patents (or supplementary protection certificates) for as long as they remain opted out of the new system.
We think that the committee’s opinion is a sensible one. A major attraction of the opt out from a patent owner’s perspective is avoiding the unpredictability of using a new and untested court system. If the existing national courts had to start applying a new body of law to opted out patents rather than the existing national law then outcomes would be less predictable and part of the purpose of the opt out would be defeated. Following the committee’s opinion, patentees have the comfort of knowing that using the current system will continue to be an option after the UPC agreement comes into force.