How can you withdraw an opt-out at the UPC, despite national litigation having taken place?
The answers seems to be “as long as that national litigation commenced before the UPC sunrise period started“ and will mean that third parties could be at risk of UPC litigation for more patents than might have been expected.
In ORD_598488/2023 & ORD_598489/2023, the UPC Court of Appeal recently overturned a decision from the Helsinki Local Division and held that national litigation which has started prior to the transitional period (which inherently includes the sunrise period) of the UPC did not block withdrawal of an opt-out.
AIM Sport Development was the patentee of an opted-out EP patent. The opt-out was withdrawn to enable a UPC litigation to be filed against Supponor. Supponor countered that the UPC did not have jurisdiction, as the withdrawal of the opt-out was not valid as prior national litigation was taking place. The national litigation had started prior to the sunrise period leading up to the start of the UPC, during which period opt-outs could be lodged so as to take effect at the start of the UPC on 1 June 2023.
The Court of Appeal held that, as the purpose of Article 83 UPCA was to prevent abuse of the UPC procedure by allowing a patentee to jump between jurisdictions, and as such abuses were not possible prior to the transitional period, “actions” under Article 83 UPCA include only those actions which were “brought before a national court after the transitional regime came into existence”.
Thus, the opt-out was validly withdrawn and AIM were permitted to start an action under the UPC.
Decisions can be found at: ORD_598488/2023 and ORD_598489/2023.
