In this earlier posting on the transitional scheme and opt-out options we explained that the future European patent system will provide two different routes for patent protection, (i.) the classical EP bundle patent  and (ii.) the new European Patent with unitary effect but, in the long run, only one judicial system namely the Unified Patent Court as established by the Unified Patent Court Agreement (UPCA).

During an at least seven-years long transitional period, however, proprietors/applicants of EP patents/applications can opt-out from the UPC system and ensure responsibility of the present European post-grant system with infringement and invalidity suits before national courts separately for each single nationalised EP patent, this circumventing the unitary effect of UPC proceedings (Art 83 UPCA).

We also pointed to the fact that there is a certain risk for EP patent proprietors to get stuck with the new UPC system and its unitary effect if, e.g, an invalidity suit is filed by a competitor before the proprietor can file an opt-out request for his patent(s).

Before this background, the recently published 15th Draft of the Code of Procedure (mark up version) provides a new Rule 5 (8) RoP implementing a sunrise period giving EP proprietors/applicants the option to opt-out before the UPC Agreement actually enters into force, thus preventing third parties to file legal suits by which a patent gets stuck with the UPC system:

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. [...]

At the time being, the length of the sunrise period is unknown.

Also new in comparison to the 14th draft of the Rules of Procedure are Rules 5 (3) and (6) RoP requiring fees for opt-out and withdrawal of opt-out (cf. also Rule 370 (2) RoP). The amount to be payed is not yet known, however, there are speculations that it will lie in the range of 200 to 400 EUR, which may sum up to a considerable amount of money if large portfolios are involved.