Following a recent decision by the UPC Court of Appeal, it is now possible to withdraw an opt-out in instances where national proceedings commenced before the UPC came into effect.
As reported here in a decision issued on 20 October 2023, the Helsinki Local Division of the UPC ruled that the withdrawal of an opt-out of AIM Sport Vision AG's ("AIM") European patent no. EP3295663 was ineffective, because the opt-out was withdrawn after proceedings for infringement of that patent had been brought in the German national courts, even though the national proceedings commenced in 2020, before the UPC came into effect.
Consequently, the Helsinki Local Division found that the UPC did not have jurisdiction over the patent, meaning that AIM could not pursue an application for provisional measures or an infringement action against various Supponor companies at the UPC.
AIM appealed this decision, and the UPC Court of Appeal has recently (12 November 2024) handed down an order overturning the Helsinki Local Division's initial finding. The Court of Appeal concluded that the withdrawal of the opt out was in fact valid.
In coming to its decision, the Court of Appeal considered the language of the relevant provision (Article 83(4)) of the UPC Agreement, and decided that the wording "Unless an action has already been brought before a national court" refers only to actions brought in national courts during the transitional period of 7 years after the date of entry into force of the UPC agreement. National proceedings brought before the UPC came into effect therefore cannot affect the validity of a withdrawal of an opt-out.
As a result, the fact that proceedings were brought in Germany in relation to the patent before the UPC came into effect was held not to invalidate AIM's withdrawal of the opt-out of the patent. The end result is that AIM can now pursue its infringement action against Supponor in the UPC.
Summary
This decision opens up new options for patentees who may have thought that the UPC was closed to them because they had opted out patents that had been the subject of national litigation before the UPC came into effect.
These patentees will now be able to withdraw the opt-outs of such patents, which can then be litigated in the UPC, provided no national proceedings in respect of such patents have been instigated since the UPC came into effect.
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