Key takeaways
Withdrawal of opt-out ineffective: dismissal due to lack of jurisdiction
An infringement action and a request for provisional measures were filed based on European Patent EP 3 295 663 (EP’663). The LD Helsinki dismissed both due to lack of jurisdiction of the UPC Courts . EP’663 was opted out on May 12, 2023, and the opt-out was registered on June 1, 2023. The opt-out was withdrawn on July 5, 2023. However, the withdrawal was found to be ineffective due to national infringement and invalidity proceedings before German national courts. Also, the Defendants’ request that the Applicant be ordered to provide security for costs was dismissed because the Defendants’ did not prove sufficiently that there is risk of insolvency of the Applicant.
Parties and filing dates of national actions do not matter:
The LD Helsinki found that also national actions that had alread been commenced before 1 June 2023 fall within the definition of Art. 83(4) UPCA and Rule 5.8 RoP. There is no reference in these provisions that commencement dates should be after 1 June 2023. Also, there are no grounds to interpret these provisions in a way that the national actions would have to involve the same parties. Furthermore, the LD established that the LD’s interpretation of Art. 83(4) UPCA and Rule 5.8 RoP is in line with the principle of non-retroactivity of treaties provided under Article 28 of the Vienna Convention on the Law of Treaties.
Division
Local Division Helsinki
UPC number
UPC_CFI_214/2023
Type of proceedings
Infringement Action and Request for Provisional Measures
Parties
AIM Sport Vision AG, Supponor Oy, Supponor Limited, Supponor SASU, Supponor Italia SRL, Supponor Espana SL
Patent(s)
EP 3 295 663
Jurisdictions
Place jurisdictions
Body of legislation / Rules
Art. 32(1) UPCA, Art. 83(4) UPCA, Art. 83(3) UPCA, Art. 83(1) UPCA, Rule 5.8 RoP, Rule 5.5 RoP, Rule 5.12 RoP, Art. 28, 31, 32 VCLT, Brussels I Regulation Art. 71c, Art. 69(4) UPCA, Rule 158.1 RoP
