LD Mannheim, April 4, 2025, order on preliminary objection, UPC_CFI_750/2024

Questions of fact and law that are relevant both to jurisdiction of the UPCA and to the merits of the case are, in principle, not to be decided in the preliminary objection procedure. They must be reserved for the main proceedings. The preliminary objection pursuant to R. 19.1 RoP serves the purpose of clarifying the jurisdiction of the UPC in demarcation to the national courts of the UPCA member states at an early stage of the proceedings. By contrast, it is not the purpose of a preliminary objection to clarify parts of the merits of the case. Otherwise, the judge-rapporteur would have to decide on issues of substance, the decision on which is in principle reserved to the panel after having heard the case in the oral hearing.

Against this background, the preliminary objection does not justify any objections to the validity of an opt-out on the grounds of lack of material ownership of the asserted patent at the time of the declaration of withdrawal. To the extent that this was the case, the infringement action would have been dismissed on the merits for lack of standing.

The UPC has jurisdiction over acts committed before the UPCA’s entry into force on 1 June 2023 (in accordance with the Court of Appeal, 16 January 2025, UPC_CoA_30/2024, APL_4000/2024). Considering a lack of en express provision determining a deviating temporal scope, Art. 3 (c) UPCA in conjunction with Art. 31 (1), Art. 83 UPCA establishes the jurisdiction over traditional European bundle patents. By referring to “actual or threatened infringements”, Art. 32 (a) (a) UPCA solely relates to the qualification of the infringing act as to be actual or merely threatened but relates not to the point in time when such act took place. This finding does not constitute an impermissible retro-active effect. The fundamental principle not to apply new rules of law to facts exclusively lying in the past does not extend to the expectation that the procedural rules for future lawsuits remain unchanged compared to the situation when the acts forming the subject-matter of the future lawsuit were committed. A party is not unduly burdened if the procedural law governing future court proceeding changes. Moreover, a different view should result in overly complicated fragmentation of court proceedings that would undermine the second recital of the UPCA, which clearly highlights “that the fragmented market for patents and the significant variations between national court systems are detrimental for innovation.”

The period between an opt-out and its withdrawal is not excluded from the jurisdiction of the UPC. The fact that opt-out and withdrawal become effective upon entry in the register (cf. Art. 83 (3) sentence 3, Art. 83 (4) sentence 4 UPCA) serves the purpose of determining the relevant point in time from which the consequences of an opt-out or its withdrawal apply to future proceedings. There is no indication in Art. 83 UPCA that the UPCA intends to exclude periods between an opt-out and its withdrawal from the jurisdiction of the UPC. This would lead to a high degree of fragmentation, as a claimant filing an infringement action before the UPC would have to file several additional infringement actions before national courts covering the period during which the opt-out was in force.