UPC Court of Appeal Decision on Opt-Out Withdrawals
Written By
Of Counsel
UK
I am a British and European patent attorney in our Intellectual Property group in London. I am involved with UK patent infringement actions relating to standard essential patents (SEPs), FRAND setting litigation and globally coordinated litigation, as well as SEP essentiality reviews and valuation. I am also authorised to represent clients before the Unified Patent Court (UPC) that opened in Europe in June 2023.
The UPC Court of Appeal has decided that withdrawing an opt-out is not affected by national proceedings that started before 1 June 2023.
This means that patent proprietors can now withdraw their opt-out even if the patent was subject to national proceedings that were started before 1 June. Equally, implementers who thought that the UPC was not an option, may now find themselves under the competence of the UPC.
Background
The UPC was established as the EU court with exclusive competence for most patent proceedings. However, during a transitional period of seven years from 1 June 2023, proceedings on traditional national patents can also be brought before national courts (Art 83 UPCA). Patent proprietors can opt out of the UPC’s competence and later withdraw this opt-out to submit to the competence of the UPC.
Court of Appeal Decision
On 12 November 2024, the UPC Court of Appeal issued a decision (UPC_CoA_489/2023) stating that the withdrawal of an opt-out is only affected by actions brought before a national court on or after 1 June 2023. National proceedings initiated before this date do not impact the withdrawal of an opt-out.
Case: Aim Sport Development v Supponor
- Context: The patent at issue was opted out as of 1 June 2023.
- Action: On 5 July 2023, Aim applied to withdraw the opt-out and lodged an infringement action and a request for provisional measures against Supponor in the UPC.
- Argument: Supponor contested the withdrawal, citing ongoing national proceedings in Germany since 2020 preventing Aim from withdrawing its opt-out.
- Court of First Instance: agreed with Supponor
- Court of Appeal: did not agree with Supponor
Court of Appeal’s Reasoning:
- The Court of Appeal (CofA) held that Art. 83 UPCA relates to a transitional regime and “provides for parallel jurisdiction of the UPC and national courts only during the transitional period. Thereafter, cases within the jurisdiction of the UPC (as listed in Art. 32 UPCA), can only be brought before the…
