Patents/ Utility Models
The opt-out is relevant for classic EP patents and EP patent applications. By an opt-out, these IP rights can be withdrawn from the jurisdiction of the UPC. Central invalidity attacks, but also centrally conducted infringement proceedings are not possible then. After an opt-out, the classic EP patent can only be litigated on a country-by-country basis before national courts, e.g. in Germany before a competent district court and the Federal Patent Court in Munich.
The opt-out is a declaration that the patent owner can make at any time, but only until the end of a seven-year transitional period. After the transitional period, which may be extended by a maximum of another seven years depending on initial experience with the new system, an opt-out will no longer be possible, i.e. all EP patents granted thereafter will be litigated exclusively before the UPC as far as the participating EU member states are concerned.
Moreover, an opt-out can no longer be declared once a dispute (infringement and/or invalidity) concerning the EP patent has been brought before the UPC.
An opt-out declaration can be reversed once by the patentee withdrawing the previous declaration, so-called opt-in. After an opt-in, the EP patent is under the jurisdiction of the UPC as before.
As can be seen, a variety of tactical and strategic options open up.