The UPC Court of Appeal clarifies the possibility of withdrawing an opt-out for a patent that has been the subject of an action before the national courts

A large number of opt-outs were filed by European patent holders during the sunrise period preceding the entry into force of the Unified Patent Court (UPC). Some of these patents were also the subject of actions before the national courts of UPC member states. In an order of November 12, 2024, the UPC Court of Appeal (CoA) has just clarified whether, for those patents that were the subject of litigation before the UPC entered into force and for which an opt-out has been filed, it is nevertheless possible to bring an action before the UPC.

For reference, the holder of a European patent may file an opt-out declaration in order to be exempted from the exclusive jurisdiction of the UPC (Article 83.3 UPCA and Rule 5.1 RoP). In such a case, only national courts are competent.

The patent proprietor has the possibility of withdrawing this opt-out (filing an opt-in) so that the UPC regains jurisdiction, unless “an action has been brought before a national court” (Article 83.4 UPCA et Rule 5.7 and 5.8 RoP).

In its order of November 12, 2024, the CoA ruled that an opt-in can be validly carried out even if the patent in question was the subject of an action before the national courts before the UPC came into force, that is, before June 1, 2023. The CoA reversed the first-instance decision, which had held that such an action before the national courts prevented the proprietor from validly carrying out an opt-in in order to bring the dispute before the UPC.

In the case under review, an infringement action had been brought before a German court before the UPC came into force. An opt-out and then an opt-in were filed in sequence whilst the proceedings before the German courts were ongoing.

The defendants contested the validity of the opt-in in view of the national action brought, and therefore the jurisdiction of the UPC. At first instance, the Local Division of Helsinki (“LD Helsinki”) considered that the opt-in was indeed invalid and declared itself not competent.

More specifically, the LD Helsinki held that the provisions of Article 83.4 UPCA and Rule 5.8 were clear and silent on the date of initiation of the national action, so that there was no reason to consider that only national actions initiated from the date of entry into force of the UPC would prevent a subsequent opt-in. In other words, the LD Helsinki held that any national action brought before the national courts of a UPC state prevents a subsequent opt-in, regardless of the date on which this action was initiated, and therefore even if it was brought before the UPC came into force.

The CoA reversed this decision and considered the opt-in validly formed.

The CoA points out that the word “action” in Article 83.4 UPCA must be read in the context of this article as a whole, which refers to the transitional period after the start of the UPC. According to the CoA, this word must have an identical meaning in the various paragraphs of this article. The CoA therefore concludes that the word “action” must be understood as an action initiated during the transitional period, and that only national actions initiated on or after June 1, 2023 deprive a subsequent opt-in of its effect.

The CoA considers that this interpretation is in line with the aim of the Article 83 UPCA, which is to provide a gradual transition to a new jurisdictional regime enabling patent owners to become more familiar with the UPC system before using it. The CoA adds that an opposite interpretation would lead to a difference in treatment between owners who have or have not been involved in national actions before June 1, 2023, which is not in line with the objective of this transitional measure.

The CoA refers the case back to the court of first instance for a decision on the merits.

This judgment provides a welcome clarification by confirming that it is possible to withdraw an opt-out (opt-in) in order to bring an action before the UPC even if an action has been brought before a national court before the entry into force of the UPC, regardless of whether that action is still pending at the time the opt-out is withdrawn. On the other hand, patent owners will have to remain vigilant in view of the fact that an opt-out filed for patents that have been the subject of actions initiated before national courts after June 1, 2023 is final and cannot be withdrawn. This judgment is of particular interest for patents that have been the subject of an opt-out during the sunrise period, as it confirms the possibility of withdrawing the opt-out to restore the jurisdiction of the UPC, provided that no national action has been taken after June 1, 2023.

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