Effective withdrawal of an opt-out when national proceedings are pending

We already discussed the first instance decision of this case dealing with conditions of effective withdrawal of an opt-out when national proceedings are pending, a few months ago, in our last business breakfast on UPC.

Background

The patent at issue was opted out on May 12, 2023, during the so-called sunrise period of three months prior to the entry into force of the UPC.

On July 5, 2023 AIM applied to withdraw this opt-out. On the same day AIM lodged an infringement action as well as a request for provisional measures against Supponor, based on the patent at issue.

Supponor contested the effectiveness of the withdrawal of the opt-out.

Decision of 1^stinstance

In first instance, the Local Division Helsinki dismissed the requests of AIM on the grounds that the UPC does not have competence over the patent at issue owing to its opt-out on May 12, 2023.

The Local division indeed considered that the withdrawal of the opt-out on July 5, 2023 is ineffective due to proceedings before the German national courts, commenced in 2020 and still pending before the Bundespatentgericht and the Munich Higher Regional Court (Oberlandesgericht) at the date of the opt-out and of the withdrawal.

Appeal proceedings

During Appeal proceedings, AIM stated that the phrase “Unless an action has already been brought before a national court” in Art. 83(4) UPCA refers to an action brought before a national court during the transitional regime.

At the contrary, Supponor was of the opinion that it refers to an action brought before a national court prior to the opt-out, either before or during the transitional regime.

According to the Court of Appeal, the meaning of the phrase “Unless an action has already been brought before a national court” in Art. 83(4) UPCA should be read in the context of Art. 83 UPCA as a whole.

The Court of Appeals held that the wording and context of Art. 83 UPCA lead to an interpretation of the phrase “Unless an action has already been brought before a national court” in Art. 83(4) as referring (only) to actions brought during the transitional period. As said, national litigation brought prior to the transitional period is unaffected by the transitional regime.

It results that 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.

It was thus concluded in this case that the Court of First Instance was therefore wrong to consider the withdrawal of the opt-out of the patent at issue ineffective and wrongly dismissed actions ACT_545571/2023 and ACT_551054/2023 for lack of its competence to hear the action.

With this decision, the Court of Appeals clarifies the conditions of withdrawal of an opt-out when national proceedings are pending, and decides in favour of an effective withdrawal in case of national proceedings brought prior to the transitional period, whether still pending or not.