At the end of last week it was announced that there will be no fee payable to opt a European patent out of the UPC system or to later withdraw any opt-out.  The UPC Preparatory Committee made the announcement following its meeting on 24-25 February 2016 in which it agreed the rules on Court fees and recoverable costs.

The Committee had previously proposed that a fee of €80 should be paid to opt out of the system.  However, it reported that, following a more detailed understanding of how the system for opt out will work, it is clear that if there is no fee paid to opt out there is no additional cost to the Court to process opt-outs. Given the previous commitment of the Committee to only reclaim the administrative costs associated with opting out of the system, as the administrative costs will be minimal if no fee is collected there should be no fee. The Committee also noted the “clear consensus” in favour of a reduction in opt-out fees from the consultation held last year. This news of a zero fee is therefore a success for those who lobbied for the change and means patentees may breathe a sigh of relief that they do not have to find additional money in budgets to pay not to use the UPC system.

With the issue of the cost of opting out closed, patentees can focus on the merits of either opting their existing European patents (and pending patent applications) out of the uncertainties of the new system or keeping their patents in the UPC to test and build the new system.  As many readers will know, there will be a period of time before the UPC opens (known as the sunrise period) and a seven year transitional period after the Court’s opening during which to opt out of the system.  With the UPC still currently on track to open its doors in early 2017, the sunrise period will likely begin in the autumn this year. This gives patentees a short period of time to make a decision if they wish to opt out their patents before the UPC actually opens for business at which time central revocation actions could be commenced in the UPC.

While patentees make their choice on which patents they wish to remove from the new system, there are still creases to be ironed out relating to the logistics of opting out.  Some information on the logistics of the process is available for future users, but there is still little understanding of how patentees wishing to opt out more than one patent should proceed with opt-outs. Will such users be required to make a separate request for each patent or will there be an option to opt out several patents at once?  The new case management system for the UPC, through which opt-outs will be processed, was presented to the Preparatory Committee at the meeting last week and the Committee noted that it will continue to be fine-tuned and improved until it becomes operational.

A separate issue is, of course, that all proprietors of a patent will have to join in the opt-out process for it to be effective.  In those cases of joint ownership and other cases where some parts of a European patent are owned by one entity and other parts by another, coordination will be required.  Likewise, licensees of European patents may well wish to consider how they can ensure that their wishes on opting out are taken into account by proprietors.