Opt-out or not? The question, seemingly technical, is in fact a strategic trade-off between two symmetrical risks.
Why opt out
The primary concern is that of central revocation: a single decision by the UPC can invalidate the European patent in all covered states. For a strategic patent—one on which an entire flagship product depends—entrusting this risk to a young and still untested court may have seemed imprudent. Hence the reflex to opt out, which preserves the status quo: national litigation, country by country, where one risks losing only one territory at a time.
Why stay in
Conversely, the UPC offers a formidable weapon to the proprietor: a single action can result in an injunction covering all contracting member states. For those seeking to enforce their rights on a large scale, forgoing this leverage (and the one-stop shop) can be costly. Pursuing multiple national lawsuits is slow and expensive; a unified action strikes hard and fast.
Scheduling pitfalls
- the opt-out is only available during the transitional period (see The transitional period);
- an action initiated by a third party before the UPC can lock the possibility of opting out; conversely, a national action locks the withdrawal;
- the withdrawal of the opt-out is final: no second opt-out is possible.
In practice, many proprietors have adopted a cautious approach at the outset (mass opt-out), only to withdraw this opt-out later once the UPC case law has stabilized and when an offensive action requires it.
And let us not forget the inconvenient reminder (or not, especially in France): none of this applies to the unitary patent, which remains, by design, under the exclusive jurisdiction of the UPC. Choosing the unitary patent means choosing unified jurisdiction—with no way out.