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No Opting-back-in if there have been Earlier Natio...

No Opting-back-in if there have been Earlier National Proceedings

The Unified Patent Court (UPC) opened for business in June 2023 and we are in a transition period lasting until 2030, when national courts and the UPC can have jurisdiction over European patents granted by the European Patent Office. Unless a patent proprietor has opted a patent out of the jurisdiction of the UPC, the new court can have jurisdiction over actions under the patent and, after 2030, only the UPC will have jurisdiction.

Many patents have been opted out of the jurisdiction of the new court. Estimates range between about a third and half of all European patents have been opted out, and opt-outs continue to be filed on existing and newly-granted patents. A proprietor who has opted out of the system can, with certain exceptions, opt back in and take advantage of the powers of the new court. We have described this as a low-riskstrategy^[1], noting the exception that you cannot opt back in if national proceedings have already begun and noting too that a third party might torpedo your patent by commencing national proceedings and preventing you from opting back in.^[2]

There has been an element of doubt over the ins and outs of opting out and in, and here we report a decision of the Helsinki Local Division of the UPC, not necessarily answering the bigger questions, but confirming the prohibition from opting back in when there have been earlier national proceedings.

The case in question is AIM Sport Vision AG v Supponor Oy (UPC CFI 214/2023 of 20 October 2023). It relates to European Patent No. EP3295663, which has claims to a system of virtual advertising billboards of the sort seen at sporting venues which allow superposition of advertisements on a TV image of an live event, giving the impression that the billboard is in the background of the action.

The claimants, AIM Sport, wanted to withdraw an earlier opt-out and commence proceedings before the UPC. Their problem was that they had previously initiated proceedings under the same patent before the German national court, and those proceedings where not yet concluded when the jurisdiction of the UPC commenced and the patent was opted out.

The claimants, seeking to withdraw their opt-out and assert their patent against the defendants, argued that the term “matter” in Rule 5.8 of the Rules of Procedure of the UPC had a narrow meaning, such that an application to withdraw an opt-out is only ineffective if the narrowly defined “matter” of the earlier action is the same as the “matter” over which the UPC has jurisdiction. Rule 5.8 is reproduced below.

The Court disagreed. The Court found the language of Article 83(4) UPCA to be clear and unambiguous and there was no reason to interpret it in any way that would lead to the conclusion that only national actions initiated after 1 June 2023 would block the possibility of withdrawing the opt-out. In particular, it did not matter if the parties in the earlier national action differed from those in the present action. Article 83(4) UPCA and Rule 5.8 RoP do not mention anything about the parties, but only the patent in suit. There are no grounds to interpret these provisions in a way that the national actions would have to involve the same parties.

The Court said its decision does not concern situations of “former national actions” that were opened and closed before 1 June 2023. That question may yet arise in another case at another time.

Comment

Opt-outs are typically filed by the European Patent Attorney or firm of Attorneys named on the EPO Register for the patent, but need not be, and can be filed by any representative authorised under Article 48 UPCA. The representative declares, in the opt-out, that he/she is authorised by the proprietor(s) to file the opt-out. (N.B. the proprietor may have changed since the patent was granted and, for various reasons, the change may not be recoded on the EPO Register).

We, at Maucher Jenkins, have experienced lawyers authorised under Article 48(1) UPCA and European Patent Attorneys authorised under Article 48(2) UPCA. We file opt-outs under European patents for which we are registered representatives, we advise on matters relating to the UPC and we initiate actions before the German Courts. We also co-ordinate pan-European proceedings in other jurisdictions. The case of AIM Sport Vision AG v Supponor highlights the importance of co-ordinating between the representative engaged for filing opt-outs and any other representatives used for national proceedings and the wider litigation team.

Rule 5.8

In the event that an action has been commenced before a court of a Contracting Member State in a matter over which the Court also has jurisdiction pursuant to Article 32 of the Agreement in respect of a patent or application contained in an Application to withdraw [an opt-out], prior to the entry of the Application to withdraw in the register or any time before the date pursuant to paragraph 5 [date of entry in the register], the Application to withdraw shall be ineffective in respect of the patent or application in question, irrespective of whether the action is pending or has been concluded.