UPC: the Court of Appeal rules on national proceedings preventing the withdrawal of the opt-out

By order of 12 November 2024, the UPC Court of Appeal clarified that withdrawal of the opt-out is not allowed when national proceedings were commenced during the transitional period. Instead, proceedings commenced before the transitional period cannot affect the withdrawal (UPC_CoA_489/2023, UPC_CoA_500/2023).

Here is the background of the case. The patent at issue was opted out on 12 May 2023, but the opt-out was withdrawn on 5 July 2023. On the same day, the patent proprietor (Claimant) lodged an infringement action and a request for provisional measures against the Defendant. This, however, contested the effectiveness of the withdrawal, and the Helsinki Local Division granted this objection: the withdrawal of the opt-out was considered ineffective due to proceedings pending before the German national courts, commenced in 2020.

The Claimant appealed the decision arguing that, under Art. 83(4) UPCA, the withdrawal is only prevented by actions brought before a national court during the transitional period, and not prior to it (as in the case at hand).Hence, the issue basically revolved around the interpretation of Art. 83(4) UPCA, which states that “Unless an action has already been brought before a national court, proprietors of or applicants for European patents … who made use of the opt-out … shall be entitled to withdraw their opt-out at any moment”.

The UPC CoA agreed with the Claimant that the sentence “Unless an action has already been brought before a national court” only refers to actions brought during the transitional period of 7 years during which, under art. 83(3) UPCA, the patent proprietor is entitled to opt-out from the exclusive competence of the UPC. The CoA noted that, if the intention was instead to clarify that national actions pending prior to the transitional period could continue unaffected by the latter, “the word ‘continued’ would have been used instead of ‘brought’”. “Proceedings that were brought prior to the transitional period, whether still pending or not, do not stand in the way of an effective withdrawal of an opt-out”.

The CoA therefore set aside the appealed order and referred the infringement and preliminary actions back to the same panel of the Court of First Instance for further adjudication.

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