The Unified Patent Court (UPC) Preparatory Committee has recently published guidance on some of the questions that have been asked by practitioners and industry regarding the transitional regime provided for in Article 83 of the Unified Patent Court Agreement (UPCA).

Article 83 provides for a transitional period of seven to 14 years in which (i) national courts and the UPC will have parallel jurisdiction over non-Unitary European Patents and (ii) a proprietor of a non-Unitary European Patent can opt-out "from the exclusive competence" of the UPC. However, the wording of the Article can potentially be interpreted in different ways.

Recognising this, the Preparatory Committee of the United Patent Court has issued on its website new guidance in a Q-and-A-style format. We list the three questions below.

  1. Does an opt-out under Article 83(3) UPCA affect only the exclusivity of jurisdiction, so that the UPC in fact retains a non-exclusive jurisdiction with regard to the opted-out patent?

    The Preparatory Committee's view is that an opt-out will remove a patent entirely from the jurisdiction of the UPC. If Article 83(3) allowed for non-exclusive jurisdiction of the UPC, it would be no different to Art 83(1) which already provides for shared jurisdiction of the UPC and national courts.
  2. Does the effect of an opt-out under Article 83(3) UPCA last only for the duration of the transitional period or for the whole life of the patent?

    The Preparatory Committee's view is that the intention is to give the patentee the possibility of removing the European Patent from the jurisdiction of the UPC for the whole life of the patent.
  3. What type of action can be filed with the national courts during the transitional period under Article 83(1) UPCA?

    The Preparatory Committee's view is that, despite the wording of Article 83(1), which could be interpreted as relating only to infringement and revocation proceedings, the purpose of the article was to provide joint jurisdiction over all actions, including for example actions seeking declarations of non-infringement. Exclusion of these actions from shared jurisdiction would potentially deprive a party of important defences, such as starting a counterclaim for revocation before the national court dealing with the infringement action.

Whilst views of the preparatory committee will be not be binding on national courts or the UPC itself, once it has started operation, the guidance will be welcomed by practitioners and patent owners as they prepare for the new patent litigation system.

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