Dr. Brigitte Böhm

End of the road for the opt-out fee

04.03.2016

In the latest draft by the Preparatory Committee of the Unified Patent Court for the court fees, the fee so far contemplated for the opt-out has been dropped, and the same applies to the opt-in fee which had likewise been contemplated.

For a transitional period of 7 years for the time being, it is possible to exclude the jurisdiction of the Unified Patent Court (EPG) for a European bundled patent pursuant to Art. 83 (3) of the Agreement on a Unified Patent Court. This possibility, which is known as an opt-out, only exists, however, as long as no proceedings have been brought before the UPC so far and mean that infringement and nullity proceedings remain in the jurisdiction of the national courts as they have been so far.

If an exception has been claimed, it is possible to withdraw the claim again, i.e. to declare an opt-in, as long as no case has been brought before a national court. That means that the patent concerned reverts to the jurisdiction of the UPC.

The public response to the opt-out and opt-in fees was less than positive. This, and also the fact that collecting the fees would ultimately cause costs in the same amount, is the reason given for the current proposal by the Preparatory Committee to abandon the fee.

The current versions of the rules on court fees and recoverable costs can be found under the following links:

https://www.unified-patent-court.org/sites/default/files/agreed_and_final_r370_subject_to_legal_scrubbing_to_secretariat.pdf

https://www.unified-patent-court.org/sites/default/files/guidelines_for_court_fees_and_recoverable_costs.pdf

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