Questions Patent Owners May Ask Themselves Regarding Opt-Out

Here, in no particular order, are some questions that owners of European Patents and applications may want to ask themselves, as an aid in deciding whether or not to opt-out of a patent from the UPC:

  • Your patent is ready for grant, why are you validating it?
    • To protect a crown jewel?
    • To deter competitors?
    • Building a portfolio for defensive purposes?
    • Reward inventors?
    • Other reasons?
  • What is the potential monetary value of the patent and protected products?
  • Is this patent worth litigating and—if so—at what level of expense?
  • Is there existing infringement or is it likely soon?
  • How likely is it that this patent will be infringed in the next seven years?
  • Are there litigious competitors? Where are they located?
  • Do you need the UPC to gain broad territorial jurisdiction for the most likely infringers?
    • Are potential infringers based outside the EU?
  • Has the patent been opposed or is it likely to be opposed at the EPO?
  • How likely is a revocation action soon and in the next seven years?
  • How likely is it that a revocation action might be filed before you threaten or file an infringement action?
  • How would you react to a stand-alone revocation action?
    • Not sue for infringement before validity is established
    • Counterclaim for infringement in the same court
    • Sue for infringement in another court, such as the UPC?
  • In what court do you most fear revocation of this patent and why
    • Experience of judges?
    • Propensity to revoke?
    • Specific, potential issues
    • General or specific unpredictability
  • If this patent is revoked by a national court in one EU state how likely is it you will continue to assert it in other states?
  • If the courts in one particular EU state decide a revocation case, how likely is it that the courts in another state would reach a different result?
  • To what extent can you influence the choice of the first court for a revocation action or counterclaim?

For more information about Unitary Patents and the Unified Patent Court, please contact Fish attorneys Bernhard Lorenz, Moritz Ammelburg, or Patrick Finn.

Return to Opt-Out page here.