welcome: please sign in

Rules of Procedure of the Unified Patent Court (RoP)

Rule 5

Lodging of an Application to opt out and withdrawal of an opt–out*

  1. The proprietor of a European patent or an application who wishes to opt out that patent or plication from the exclusive competence of the Court in accordance with Article 83(3) of the Agreement shall subject to Rule 5.9 lodge an Application with the Registry. Where the patent or application is owned by two or more proprietors, all proprietors shall lodge the Application. The Application shall be made in respect of each of the contracting member states in which the European patent is owned by the proprietor or proprietors in question.

  2. The *Application to opt out shall contain:

    • (a) the name of the proprietor or proprietors or applicant or applicants for the European patent (or patents) or application (or applications) in question and all relevant postal and, where applicable, electronic addresses; and
      (b) details of the patent (or patents) and/or application (or applications) concerned including the number (or numbers), and in the case of patents the designated Contracting Member States concerned.

  3. The applicant(s) for an opt-out shall pay the fixed fee in accordance with Part 6. The Application shall not be entered in the register until the fixed fee has been paid.

  4. Subject to Rule 5.3 the Registrar shall as soon as practicable enter the Application to opt out in the register. Subject to Rule 5.5, the opt-out shall be regarded as effective from the date of entry in the register.

  5. In the event that an action has been commenced in respect of a patent (or patents) and/or an application (or applications) contained in an Application to opt out prior to the date of entry of the Application in the register the Registrar shall notify the applicant of such action as soon as practicable and the Application for opt out shall be ineffective in respect of the patent (or patents) and/or application (or applications) in question.

  6. A proprietor or proprietors of a patent (or patents) and/or an application (or applications) the subject of an opt-out pursuant to this Rule may lodge an *Application to withdraw the opt-out in respect of the patent(s) or application(s) the subject of the opt-out. The Application shall contain the particulars in accordance with Rule 5.2 and shall be accompanied by the fixed fee in accordance with Part 6. Subject to the receipt of the fixed fee the Registrar shall as soon as practicable enter the Application to withdraw in the register and the withdrawal shall be regarded as effective from the date of entry in the register.

  7. A patent or application the subject of an Application to withdraw which has been entered on the register may not thereafter be the subject of a further Application to opt out.

  8. The Registrar shall as soon as practicable notify the European Patent Office of the entries in the register pursuant to Rule 5.4 and 5.6.

[9. An Application to opt out may be lodged with the European Patent Office after a date to be announced by the European Patent Office and before the coming into effect of the Agreement. The Application shall be accompanied by the fixed fee provided for in Rule 5.3 and shall otherwise comply with any instructions for lodging the Application issued by the EuropeanPatent Office. At the date of entry into force of the Agreement in accordance with Article 59 of the Agreement the European Patent Office will transfer details of all such Applications and all such fees to the Registrar and the Applications shall be treated as entered on the register and effective from the said date of entry into force of the Agreement.]

Notes

Relation with Agreement: Article 83(3) and (4)

*The Drafting Committee would like to note, in response to certain written comments received, that the provisions of Article 83 of the Agreement for opting out are clear and provide for:
(i) a complete ousting of the jurisidiction of the UPC;
(ii) such ouster is, subject to Rule 5.6, for the life of the relevant patent/application and
(iii) covers all designations owned by the proprietor(s) in question.

Status: 15th draft of 31st May 2013