Following the launch of the Sunrise period on March 1, 2023, patent holders have been able to file opt-out declarations at the UPC, but what has been the uptake? Questel’s Denis Bayada examines the data.
In a surprising turn of events, the EPO decided not to publish any UPC information, including opt-out information, before the Unitary Patent (UP) comes into force on June 1, 2023. We chose to retrieve opt-out information directly from the UPC. This process runs once a week (on Wednesdays or Thursdays), and the opt-out information is made available to everyone during our Sunday updates. All data shown was valid as of April 23, 2023.
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There are several types of opt-out information: the opt-out proper, the withdrawal from opt-out, and the correction and removal of opt-out and withdrawal. For now, there is little more than opt-out, so we will concentrate on that. Key findings include:
- A cumulative growth in UPC opt-out declarations since the launch of the Sunrise period;
- A wide adoption of the system by the pharmaceutical industry in particular;
- The top 20 assignees range from Chinese electronics companies to Swedish manufacturing giants; and
- Novagraaf, part of the Questel Group, has filed the most opt-out declarations in the system to date.
UPC opt-out declarations: what the data tells us so far
As seen in the graph below, there is a steady increase in patents being opted out, and an acceleration of daily patents opted out. This trend might not be so obvious since the UPC computer system experienced some downtime, skewing the data.
Our analysis further shows that the UPC system is particularly busy on Tuesdays and Fridays, with (unsurprisingly) a significant decrease on weekends:
From an industry perspective, there are notably more patents from the pharmaceutical world being opted out than other sectors (see graph, below). This could be because the pharmaceutical industry relies more on courts in local jurisdictions to enforce their rights. Indeed, it could be too risky for them to lose patents in all territories at once.
UPC opt-out declarations: who are the earliest adopters?
Our research shows the top five assignees so far to be OPPO (Guangdong Oppo Mobile Telecommunications), Fuji, LG Chemicals, Honeywell International, BASF and General Electric. The top 20 list:
Opt-outs can be registered by approved entities, which may include the patent owners or other authorized companies. Novagraaf, a part of Questel, holds the top position for registering opt-outs by volume:
Other interesting points of note
Some organizations are choosing to opt out "dead" patents, although the general trend is to opt out granted patents:
The majority of UPC opt-out declarations have been filed for granted patent rights with an application date of 2017:
UPC opt-out declarations: what happens next?
Over the past few weeks, there has been a notable increase in the number of patents opting out of the UPC system. This trend suggests that many patent holders are carefully considering their options and deciding to maintain their rights in local courts. The data shared in this article highlights some patterns, such as the prevalence of opt-outs among pharmaceutical patents and the tendency to opt out granted patents.
As we move closer to the implementation of the Unitary Patent, it will be interesting to observe how these trends evolve and whether more industries start to follow the pharmaceutical sector's lead. The opt-out system is still in its early stages, and as more information becomes available, patent holders and legal practitioners will be better equipped to make informed decisions about their IP rights within the UPC framework.
For further information on the UPC opt-out process, including the advantages and disadvantages of opting out of the UPC, download our eBook. For specific advice or more insight on the data shared in this blog, get in touch with our experts.
Denis Bayada is Project Manager BioSciences at Questel.