Strategies for pending patent applications and important aspects of the opt out procedure
When preparing for the entry into force of the new Patent system in Europe, also patent application which are now currently pending before the European Patent Organization (EPO) must be considered. A decision must be made whether to try to delay the proceedings to be able to request a European Patent with Unitary effect or to proceed to a granted European patent before this date. Of course, a pending patent application which is not foreseen to be granted before the entry into force, and which is not meant to be within the competence of the Unified Patent Court (UPC), may also be opted out, starting during the sunrise period.
Delaying the proceedings with the EPO can be done by requesting extensions of time limits, or if that’s no longer an option, by filing divisional applications. The filing of divisional applications, having slightly different scope of protection, could also be an important strategy for those applicants who wish to have it both ways, i.e. request Unitary Patent and have the patent validated nationally as today.
This means that both applicants and proprietors will have to consider the possibility of requesting opt out from the UPC, even before the Court opens. A strategy should be developed for the patent portfolio, at the latest during the fall of 2016, to be able to quickly file any such requests when the Registry of the UPC opens up. The request for opt out can be withdrawn, at any time unless national litigation proceedings have begun, but you may only request opt out and withdraw the request one time.
Requesting opt out might seem as an easy administrative task, especially since it is done online in the Case Management System of the UPC, and is not envisaged to incur any fees. However, the proprietor must keep in mind that it is only the entitled proprietor and all entitled proprietors that may file the request. Keeping track of who is the entitled proprietor in different states, is therefore essential, especially if you have multiple or different proprietors for your patents.
Sofia Willquist, European Patent Attorney