The decision to opt out a European Patent from the Unified Patent Court (UPC) system requires careful strategic considerations for patent holders. Among these considerations is the potential to later withdraw the opt-out to enable effective patent enforcement under the UPC's jurisdiction. However, the recent ruling from the Helsinki local division (the “Court”) underscores that the withdrawal is not feasible if national proceedings regarding the patent have already been initiated in a national court, even if these proceedings were filed before the UPC's inception in June 2023.
AIM Sport Vision AG, the patent holder, submitted an opt-out notice for European patent EP3295663 in May 2023. This action effectively removed the patent from the jurisdiction of the UPC. However, on 5 July 2023, following the entry into force of the Agreement on the Unified Patent Court (UPCA), the patent holder withdrew the opt-out notice. Simultaneously, an infringement action was filed, and a preliminary injunction was sought against Supponor Oy and others.
The preliminary injunction was sought based on the patent, which protected “the digital superimposition of an image onto another image” – a technique employed for example for advertising in football stadiums. AIM Sport Vision AG emphasised the urgency of the situation noting that the decisions concerning the acquisition by UEFA (the Union of European Football Associations) of the systems provided by the parties would take place in the days immediately following the oral hearing.
In their preliminary objection, the defendants, Supponor Oy and others, argued that the application for preliminary injunction ought to be dismissed due to the Court’s lack of competence. The defendants maintained that according to Article 83(4) of the UPCA and Rule 5.8 of the Rules of Procedure (RoP), the withdrawal of the opt-out of the patent was ineffective. This was because two national actions in Germany were pending both on the date of opt-out and on the date of its withdrawal.
The claimant contended that Article 83(4) cannot apply to national actions filed before the entry into force of the UPCA on 1 June 2023. The claimant argued that any contrary interpretation would violate in particular the non-retroactivity of international treaties as stipulated by the Vienna Convention on the Law of the Treaties (“VCLT”), dated 23 May 1969.
The Court exceptionally gave its ruling orally, immediately following the conclusion of the oral hearing on 21 September 2023. The Court dismissed the cases, finding that the withdrawal of the opt-out was ineffective due to national infringement and invalidity proceedings brought before the national courts in Germany. Consequently, the Court lacked competence to hear the case. The written decision was delivered on 20 October 2023 (UPC_CFI_214/2023).
The Court justified its ruling by referring to the wordings of the Article 83(4), which provides that the withdrawal is possible “unless an action has already been brought before a national court (…)”, and Rule 5.8 RoP further stating that “In the event that an action has been commenced before a court of a Contracting Member State (…) prior to the entry of the Application to withdraw in the register or any time before the date pursuant to paragraph 5 (…)” and “the Application to withdraw shall be ineffective in respect of the patent or application in question, irrespective whether the action is pending or has been concluded”. The Court deemed these wordings “clear and unambiguous”. According to the Court, the wordings do not provide any limitation or restriction as argued by the claimant such as that it would only apply to previous national proceedings that have been initiated during the transitional regime after 1 June 2023. Also, contrary to the claimant’s interpretation, the Court found that the Article 83(4) is in line with the principle of non-retroactivity. In addition, the Court concluded that the decision to opt-out is a strategic move, which AIM Sports Vision made aware of the consequences.
Implications of this ruling are manifold. Firstly, the UPC appears to offer an effective alternative for patent dispute resolution in the light of the UPC’s first rulings. The Court's decision to announce its ruling orally immediately after the hearing (which is common practice e.g. in various patent revocation proceedings such as in EPO opposition proceedings), an occurrence dictated by the urgency of the case, serves as an example.
Secondly, the Court emphasised that opting out is a strategic choice that carries inherent risks, which patent holders must duly acknowledge. There is generally the strategic option of opting out a patent first and withdrawing the opt-out only if an infringement action before the UPC is intended (which was apparently the plan of the patentee in the present case). However, in case actions have already been commenced before national courts before the request for withdrawing the opt-out is filed (even if these proceedings commenced before the start of the UPC; as in the present case), the patent holder is blocked from withdrawing the opt-out and consequently from using the UPC system for patents which had been opted-out previously.
Finally, the Court's ruling has attracted widespread attention, with divergent opinions expressed regarding the judgement's outcome. However, this decision may not be the final word on the matter, as an appeal (at least in the corresponding main proceedings) is anticipated.
We remain eagerly awaiting the future case law of the Helsinki local division.
