Since the start of the sunrise period on March 1, 2023, it will soon be 3 months during which owners of European patents or patent applications will have had the opportunity to file an "opt-out", i.e. to retain the current dispute resolution system and not to come under the new jurisdiction of the Unified Patent Court (UPC), which will enter into force on June 1, 2023.
With just a few days to go before the end of the “sunrise” period, it is worth taking a look at the statistics for European titles that have been opted out.
As of May 26, 2023, there were more than 350,000 European patents or patent applications where an opt-out has been filed. This corresponds to around 23% of European titles in force.
We can see that progress is constantly evolving, with a very strong acceleration in recent weeks as we approach the end of the sunrise period on May 31, 2023.
An analysis of technological fields, as defined by the Orbit Intelligence database, reveals a number of peculiarities relating to European titles for which an opt-out has been requested.
By May 15, 2023, when just over 150,000 opt-outs had been filed, this corresponded to just over 10% of European titles in force, while in particular technological fields such as pharmaceuticals and organic chemistry, the rate was close to 15%. Such high rates were also observed in the textile and paper sectors. On the other hand, semiconductors and pump and turbine engines, for example, had opt-out rates below 8%.
It is also interesting to look at the rate of disputes and oppositions relating to the European titles for which an opt-out has been requested.
As of May 15, 2023, almost 5% of opt-outs filed concerned European titles for which an opposition had been filed. By comparison, taking into account all published European titles filed since 2003 and still in force, only 2.9% were opposed.
The same trend applies to European patents that are or have been the subject of a litigation: 0.24% of opt-outs filed concern European patents for which a dispute exists, while only 0.14% of European patents in force have been the subject of a dispute.
This shows that owners of European titles with litigation potential prefer to opt-out from the jurisdiction of the UPC, in particular to avoid a centralized patent invalidation action.
Finally, with London’s withdrawal from the UPC, the cases that would initially have been assigned to the London court will be shared between either Paris or Munich (according to the latest information from the UPC Presidium), or at least partly assigned to Milan (according to certain statements by the Italian government).
It should be remembered that the location of the Central Division in which disputes will be handled is defined according to the International Patent Classification (IPC) main code of the European title in question. As of May 15, 2023, while just over 10% of European titles in force had been the subject of an opt-out, the number of European titles that would have been handled by the London court was higher than this average rate, with 11.4% and 12.2% respectively for IPC codes A and C. Conversely, less than 8% of the European titles initially under the Munich court had been opted out.
It is important to understand that these statistics are only valid for the very specific “sunrise” period, during which European patent and patent applications owners were able to choose in advance whether or not to file an opt-out. Decisions have therefore been taken on the potentially most sensitive cases. Opt-out applications may continue to be filed for several years, both for existing European titles and for future European patent applications.
We will continue to monitor opt-out filing trends after the sunrise period, once the UPC comes into force on June 1, 2023.
Regimbeau’s Strategic Intelligence department can assist you in :
Keep an eye on your competitors: use active monitoring to identify their UPC strategy.
Monitor patents by technical field: what is the trend in UPC use in a specific technical field?
Monitor specific patents: You’ve identified one or more titles of particular interest to you. Watch for an opt-out.
Monitor your patent portfolio: Make sure that third parties are not filing opt-outs on your patents, and react quickly if you identify an opt-out filed without your consent.
Regimbeau’s Patent Attorneys are also at your disposal if you would like to find out more about the new UPC system, in particular in view of your patent portfolio and your commercial and strategic challenges.
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