A commentary on the decision of the Court of Appeal of 12 November 2024 (UPC_CoA_489/2023, UPC_CoA_500/2023). 

 

In its judgment of 12 November 2024, the UPC Court of Appeal overturned a decision of the local division in Helsinki of 20 October 2023, in which the local division had denied the jurisdiction of the UPC due to an allegedly ineffective withdrawal of an opt-out of the patent in suit.

 

The subject of the decision of the local division in Helsinki was the interpretation of Art. 83 (4) UPCA. This regulates the revocation of an opt-out as follows:

 

“Provided that no proceedings have yet been instituted before a national court, holders or applicants of European patents or holders of supplementary protection certificates granted in respect of a product protected by a European patent who have made use of the opt-out provided for in paragraph 3 may at any time withdraw that opt-out. In that event, they shall inform the Registry accordingly. (...)”

 

This ground for exclusion is also contained in Rule 5.8 of the Rules of Procedure of the Unified Patent Court:

“If, in respect of a patent or application which is the subject of a request for revocation, an action has been brought before a court of a Contracting Member State before the entry of the request in the Register or at a time prior to the date referred to in paragraph 5 in a matter over which the court also has jurisdiction under Article 32 of the Convention, the request for revocation shall be ineffective in respect of the patent or application concerned, irrespective of whether the action is still pending or has been concluded.“

 

The local division had decided that this also includes actions that had already been brought before national courts before the UPC commenced operations on 1 June 2023 and had not yet been concluded at the time of the revocation from the opt-out. The patent in dispute was already the subject of two national proceedings at the time the UPC commenced operations. Against this background, the local division was of the opinion that a revocation of the opt-out was no longer possible, the declared opt-out was therefore valid and the UPC therefore had no jurisdiction in the dispute.

 

The decision of the court of appeal

 

The Court of Appeal does not share this legal opinion of the local division. In the view of the Court of Appeal, Art. 83 (4) UPCA only refers to national proceedings that were brought before a national court during the „transitional period” of seven years. Proceedings from before this period are not taken into account and therefore do not prevent the revocation of an opt-out.

 

The Court of Appeal based its decision on a detailed grammatical, systematic and teleological interpretation of Art. 83 UPCA.

 

Art. 83 (1) UPCA regulates the parallel jurisdiction of the UPC and the national courts for actions brought during the transitional period of seven years from 1 June 2023. (4) of Art. 83 UPCA refers to precisely these actions. It could therefore only concern actions brought during the transitional period. This is also supported by the meaning and purpose of Art. 83 (4) UPCA. The provisions in Art. 83 (3) and (4) UPCA are intended to enable the patent proprietor to become familiar with the new functioning of the UPC. The patent proprietor should then be able to use the new system by revoking his opt-out. The provision in Art. 83 (4) UPCA is intended to prevent abuse of this system through improper switching between the court systems. However, such an abuse requires that the transitional period has already begun. Otherwise, an abuse would be inconceivable.

 

Even a possible interpretation of R. 5.8 RoP to the contrary would not change this result, since in the event of a conflict between the lower-ranking provisions of the RoP and the UPCA, the latter must always be given precedence.

 

The Court of Appeal therefore referred the case back to the local division in Helsinki for a decision on the merits.

 

Valuation

 

The decision of the Court of Appeal enables a large number of patent proprietors who have withdrawn their European patents from the jurisdiction of the UPC by opting out to return to the new court. Previous national proceedings are no longer an obstacle to this, regardless of whether they have been concluded or not. In view of the UPC's convincing start so far, patent proprietors should carefully examine the possibility of revoking from the opt-out in order to be able to benefit from the advantages of the new court system.

 

Do you have any questions about proceedings before the UPC? Then please contact our team of specialized lawyers and patent attorneys.