Key takeaways
If a patent has been opted out of the jurisdiction of the UPC, this opt-out can only be validly withdrawn, if no action according to Art. 32 UPCA concerning the relevant patent has commenced at a national court since June 1, 2023
The term “action” in Art. 83 UPCA refers not only to infringement and revocation actions, but to all actions mentioned in Art. 32 UPCA over which the UPC has jurisdiction.
Considering the wording, structure, object and purpose of Art. 83 UPCA as a whole, the sentence “Unless an action has already been brought before a national court” in Art. 83 (4) UPCA must be understood to refer to an action brought before a national court during the transitional regime.
With this decision, it is now clear that patents that were opted out can still be made fit for assertion before the UPC by withdrawing the opt-out, even if proceedings before a national court had been brought before June 1, 2023. Actions before national courts brought prior to June 1, 2023 (i.e., the beginning of the transitional period), whether still pending or not, do not stand in the way of an effective withdrawal of an opt-out.
Division
Court of Appeal
UPC number
UPC_CoA_489/2023, APL_596007/2023, UPC_CoA_500/2023, APL_596892/2023
Type of proceedings
Place type of proceedings
Parties
Place parties
Patent(s)
AIM Sport Development AG
vs.
Supponor OY, Supponor Limited, Supponor SASU, Supponor Italia SRL, Supponor Espana SL
Jurisdictions
Court of First Instance was the Local Division Helsinki (ACT_545571/2023, ACT_551054/2023)
Body of legislation / Rules
Art. 83 UPCA
