Opting out of the UPC: the perspective of Italian patent proprietors

Following the recent opening of the Milan section of the central division of the UPC, we wondered about the approach taken so far by Italian patent proprietors regarding the opt-out.

Let’s start with a short recap of what “opt-out” means.

As a general rule, the Unitary Patent Court has exclusive jurisdiction over European patents with unitary effect.

The UPC also has jurisdiction over “classic” European patents, for which the traditional validation procedure has been carried out. However, for a transitional period of seven years after the entry force of the UPC agreement, an action for infringement or revocation for the “classic” European patents may still be brought before national courts or other competent national authorities.

An opt-out request may be filed to remove a “classic” European patent from the jurisdiction of the UPC, provided that no action has already been brought before the UPC regarding that patent. Furthermore, the opt-out can also be withdrawn only once, but the effects of the withdrawal are permanent.

As can be seen from the histogram below, despite an initial and noticeable apprehension of Italian patent proprietors towards the UPC, the number of registered opt-outs in the most recent months has dropped. (It should be noted that the column for June 2023 also takes into account opt-outs received in the three-month “sunrise period” before the court took effect on June 1, 2023.)



At the same time, it is clear from the histogram below that the number of opt-out withdrawals by Italian patent proprietors is growing.



Comparing the two graphs, there seems to be an increasing level of trust of Italian subjects in the UPC.

Perhaps it could be due to the case law available so far and the fact that some procedural and substantive doubts have been at least partially clarified? Or perhaps for us Italians it is also about finally having a section of the central division in the bel paese and feeling that we can somehow “play at home”?
Once again, we just have to wait for future developments.

Many thanks to Simona Zanzola for researching the data and assisting us in interpreting it.


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