Opt-Out Deadline Approaching: Mistakes Patent Holders Must Avoid at the UPC

The clock is ticking: On 1 June 2030, the transitional period of the Unified Patent Court (UPC) expires. Patent holders who have not filed an effective opt-out for their European patents by then will permanently subject them to the exclusive jurisdiction of the UPC. Over 630,000 patents have already been opted out of UPC jurisdiction — yet many of these opt-outs are defective or strategically inadequate. Here are the five most critical mistakes patent holders must avoid right now.

Why the UPC Opt-Out Is Now Critical

The Unified Patent Court (UPC) commenced operations on 1 June 2023. Since then, a seven-year transitional period has been running — extendable by a further seven years — during which holders of classic European patents can exclude their rights from UPC jurisdiction (the so-called opt-out, Art. 83(3) UPCA).

The numbers are striking: During the three-month sunrise period ending on 31 May 2023 alone, over 418,000 opt-out applications were filed. By the end of 2024, the total had risen to more than 630,000 opted-out patents (IPWatchdog). At the same time, demand for the Unitary Patent has been growing: the uptake rate increased from 17.5% in 2023 to 27.6% in early 2025 (Boult Wade Tennant).

But beware: An opt-out can only be filed until one month before the end of the transitional period — i.e. presumably until 1 May 2030 (V.O. Patents & Trademarks). After that, the UPC will acquire exclusive jurisdiction over all non-opted-out classic European patents in the participating member states (Finnegan).

Those who fail to strategically protect their rights now face serious consequences. The first three years of UPC practice have shown that significant errors continue to occur in the opt-out process.

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Mistake No. 1: Failing to Correctly Identify Proprietorship

The Problem

By far the most common and most dangerous mistake: The opt-out is not filed by all entitled proprietors. The consequence: The opt-out is invalid, and the patent remains — unnoticed — subject to UPC jurisdiction.

Why This Is So Problematic

The UPC Registry does not conduct any substantive review of opt-out applications. There is no verification of whether the applicant is actually the true proprietor or whether all co-owners have been named (Mewburn Ellis). The application is simply registered — and its validity is only examined in the event of a dispute.

The requirements are complex:

• The opt-out must be filed as a bundle covering all contracting states in which the European patent is validated.
• All proprietors and applicants must be named who are entitled to be registered as owner under the national law of each individual contracting state — regardless of whether they are actually recorded in the national registers (HGF).
• Where supplementary protection certificates (SPCs) have been granted, their holders must also be included.
• If the patent has been assigned to different entities in different countries (e.g. intra-group transfers), all current proprietors must consent (D Young & Co).

Practical Example

A German company has assigned the French part of its EP to its French subsidiary, but the national registers have not been updated accordingly. The opt-out is filed solely by the German parent company. Result: A competitor can initiate central revocation proceedings before the UPC and challenge the opt-out as invalid.

How to Avoid This Mistake

• Conduct a comprehensive proprietorship audit across all 18 (prospectively 24) participating UPC states.
• Cross-check register entries at national patent offices against the actual legal position.
• Obtain consent from all co-owners, applicants, and SPC holders.
• Prepare a robust Declaration of Proprietorship where the applicant is not recorded in the register.

Mistake No. 2: Underestimating the Irrevocability of Opt-In

The Problem

Many patent holders are unaware that withdrawal of an opt-out (the so-called opt-in or withdrawal) is final and irrevocable. Once an opt-out is withdrawn, the patent can never again be removed from UPC jurisdiction (Kilburn & Strode).

The Strategic Trap

The strategy of filing a precautionary opt-out and withdrawing it later — for example, immediately before bringing an infringement action at the UPC — has been widely discussed. However, this strategy comes at an irreversible price:

• After opt-in, the patent is permanently subject to both UPC and national jurisdiction (parallel jurisdiction during the transitional period), and thereafter exclusively to the UPC.
• A renewed opt-out is excluded — even if the strategy proves misguided.
• The patent becomes exposed to the risk of central revocation proceedings before the UPC, with effect across all participating states.

The AIM Sport v Supponor Decision

The widely noted Court of Appeal ruling in AIM Sport Development AG v. Supponor OY (12 November 2024) has further clarified the rules on opt-out withdrawal: National proceedings commenced before 1 June 2023 do not prevent withdrawal of the opt-out. Only national actions brought during the transitional period (from 1 June 2023) block withdrawal (Pinsent Masons, Finnegan).

How to Avoid This Mistake

• Plan your opt-out strategy for the long term — not as a short-term tactical measure.
• Before any withdrawal, assess whether the patent should truly permanently remain within the UPC system.
• Consider that competitors may deliberately initiate national proceedings after an opt-in to prevent any future reversal.

Mistake No. 3: Not Detecting Unauthorised or Defective Opt-Outs

The Problem

An alarming finding from practice: Unauthorised opt-outs have been filed by third parties — in some cases with entirely false information about proprietor and representative. The affected patent holders had no knowledge of these filings (epi Information).

What Happened

The UPC Registry performs no substantive review of opt-out applications whatsoever. During the sunrise period, an API interface was also provided for bulk opt-outs, used by service providers. In at least one documented case, opt-outs were filed under the name of a law firm that had never submitted the application. The affected patents were recorded as “opted-out” in the register despite the proprietors having never authorised this.

The Consequences

• An unauthorised opt-out, while formally invalid, remains recorded in the register until it is actively removed.
• Removal can only be requested by a UPC representative acting on behalf of the true proprietors under Rule 5A of the Rules of Procedure.
• If the unauthorised opt-out is mistakenly “withdrawn” (under Rule 5 instead of Rule 5A), a genuine opt-out is permanently excluded in the future.
• A defective opt-out offers no protection in an emergency: If a revocation action is filed before the UPC, the patent holder has only one month to lodge a preliminary objection. If this deadline is missed, the UPC assumes jurisdiction.

How to Avoid This Mistake

• Check the UPC Register regularly to see if an opt-out has been recorded for your patents — even if you never filed one.
• If you instructed a service provider to file the opt-out, obtain copies of the filed documents and verify their completeness and accuracy.
• If you suspect an unauthorised opt-out: Apply for removal under Rule 5A — not withdrawal under Rule 5.
• Establish a monitoring system for your patent portfolio in the UPC Register.

Mistake No. 4: Overlooking the National “Lock-Out” Trap

The Problem

Patent holders who have filed an opt-out and wish to withdraw it later — e.g. to bring proceedings before the UPC — may fall into a trap: If an action has been commenced before a national court of a UPC member state after 1 June 2023, withdrawal of the opt-out is permanently blocked — the so-called national lock-out (Jones Day).

The Strategic Dimension

This rule has both an offensive and a defensive side:

Offensive: A competitor seeking to keep a European patent out of the UPC system can deliberately initiate national proceedings (e.g. a revocation action or a declaration of non-infringement in a UPC member state). This permanently blocks the patent holder’s option to withdraw the opt-out and use the UPC for cross-border enforcement.

Defensive: A patent holder who wishes to protect the patent through an opt-out from central revocation must ensure that no third party attacks the patent before national courts, thereby deliberately triggering the lock-out — in the expectation that the patent holder will never be able to withdraw the opt-out.

The Court of Appeal’s Clarification

The UPC Court of Appeal clarified in the AIM Sport v Supponor decision that only national proceedings during the transitional period (from 1 June 2023) block withdrawal. Proceedings commenced before 1 June 2023 do not prevent withdrawal — regardless of whether they are still pending or have already been concluded (Finnegan).

How to Avoid This Mistake

• Monitor national proceedings against your European patents across all UPC member states.
• Factor into your opt-out strategy that a third party may restrict your flexibility through targeted national actions.
• For “crown jewel” patents, evaluate whether the risk of national lock-out should be mitigated through parallel national patent applications.
• In light of the AIM Sport decision, reassess whether existing opt-outs should be revised.

Mistake No. 5: Failing to Pursue a Holistic Patent Strategy

The Problem

Many patent holders treat the opt-out as an isolated measure. In reality, it must form part of a comprehensive European patent strategy that considers the interplay between the Unitary Patent, the classic EP bundle patent, national applications, and the respective procedural position.

Strategic Aspects Often Overlooked

1.  Cost risk at the UPC: The UPC’s cost regime follows the “loser pays” principle — covering the opponent’s actual legal costs, insofar as reasonable (subject to a value-dependent cap). This differs significantly from national systems such as the German RVG framework, where recoverable costs are calculable on the basis of the amount in dispute (avocado.de).
2. Central revocation action: Without an opt-out, any third party — not just a defendant in infringement proceedings — can file a central revocation action before the UPC’s Central Division at any time. The decision has effect across all participating states. The court fee is EUR 20,000 (Maucher Jenkins).
3. Divisional strategy: For particularly valuable patent families, it may be advisable to file divisional applications and opt out only some of them. This preserves the flexibility to proceed either before the UPC or before national courts on a case-by-case basis (Hogan Lovells).
4. National patents as a fallback: For “crown jewel” patents, filing parallel national patent applications should be considered after the transitional period expires, to maintain protection in key markets independently of the UPC.
5. Review licence agreements: Licensees — including exclusive licensees — have no automatic right to participate in the opt-out decision. The implications of the opt-out (or its absence) on existing licence relationships must be addressed contractually (D Young & Co).

How to Avoid This Mistake

• Develop a holistic strategy that takes into account opt-out, Unitary Patent, divisionals, and national applications.
• Review existing licence agreements for provisions on UPC jurisdiction.
• Differentiate by patent type: Younger, broadly validated patents may benefit from UPC jurisdiction; older patents validated in only a few countries are often better protected through an opt-out.
• Regularly evaluate the developing UPC case law and adjust your strategy accordingly.

More articles on patent and trade mark law on our IP Blog.

What Happens After the 2030 Transitional Period Ends

After 1 June 2030 (unless the transitional period is extended by a further seven years), the following principles apply (Boult Wade Tennant):

Important: Those seeking a new European patent that is not subject to the UPC after the deadline must pursue the route of national patent applications — bypassing the EPO (EIP).

Checklist: What Patent Holders Should Do Now

• Conduct a portfolio analysis: Which European patents and applications are validated in UPC member states?
• Verify proprietorship: Are the true proprietors correctly identified in all relevant states?
• Check opt-out status: Is an effective opt-out registered for each relevant patent — or does an unauthorised opt-out appear in the register?
• Clarify licence relationships: Are the implications of the opt-out addressed in existing licence agreements?
• Monitor national proceedings: Have any national actions been commenced since 1 June 2023 that could block a future withdrawal of the opt-out?
• Develop a strategy for “crown jewels”: Divisionals, parallel national applications, long-term planning.
• Observe the deadline: File the opt-out by 1 May 2030 at the latest.
• Track legal developments: Regularly evaluate UPC case law — particularly on the validity of opt-outs and jurisdictional issues.

Conclusion

The UPC opt-out is not a routine administrative task. It is a fundamental strategic decision with far-reaching consequences for the protection and enforceability of European patents. The experience of the UPC’s first three years demonstrates that formal errors, inadequate proprietorship checks, and insufficient strategic planning carry substantial risks.

The transitional period is running. Patent holders who fail to act now risk subjecting their most valuable intellectual property to a court whose case law is still evolving — and which offers the possibility of centrally revoking a patent across Europe in a single proceeding.

Act now. Have your patent portfolio reviewed by an experienced European Patent Attorney and develop a tailored UPC strategy.

Do you have questions about the UPC opt-out or the strategic alignment of your patent portfolio? Contact us — we would be happy to advise you.

More articles on current intellectual property topics can be found on our Blog and in our IP News overview.

Sources

• EPO, FAQ on the Unified Patent Court: epo.org
• Luginbuehl & Kotzur, “The Unified Patent Court’s Opt-Out Option — A General Introduction”, GRUR International, 2023: academic.oup.com
• Gamarra, “Diverging Patenting Strategies: Evidence from the Unified Patent Court and the European Standard-Essential Patent Regulation”, SSRN 2024: ssrn.com
• epi Information, “UPC Opt-Outs — A Cautionary Tale”, 2023: patentepi.org
• Finnegan, “Opt-Out Strategy Considerations After Ruling in UPC Appeal”, 2025: finnegan.com
• Pinsent Masons, “UPC ruling clarifies patent opt-out withdrawal rights”, 2024: pinsentmasons.com
• D Young & Co, “UPC opt-out FAQs”: dyoung.com
• Kluwer Patent Blog, “UPC opt-outs: statistics and trends one month in”, 2023: wolterskluwer.com
• IPWatchdog, “The UPC in 2024: Statistics, Trends and Substantive Law”, 2024: ipwatchdog.com
• Boult Wade Tennant, “Two Years In: UPC Transitional Period Update”, 2025: boult.com

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