A guide to the UPC and the UP - Flipbook - Page 138
Contentious Issues
Does the transitional regime apply to all actions?
8-15
It has been suggested that because art.83(1) UPCA only refers explicitly to actions for
infringement and revocation that the Court retains exclusive jurisdiction over the other types of
actions to which the UPCA applies, for example, DNIs, counterclaims for revocation and actions
for provisional and protective measures. The more accepted view is that art.83(1) UPCA uses a
short-hand for all actions for which the Court has competence under art.32(1) UPCA. 15
8-16
If this were not the case, for example, a defendant would not be able to raise a counterclaim
for revocation 16 before a national court dealing with an infringement action. Instead, such a
defendant would be forced to bring a separate revocation action before the Court. Procedural
equality would favour the broad reading of art.83(1) UPCA. Moreover, the exclusion of actions
for DNIs would be contrary to the interpretation by the CJEU of what was art.5(3) Brussels I
Regulation and is now art.7(2) Brussels I Regulation (recast) which held that a negative
declaratory action and an infringement action are two sides of the same coin. 17 Again, this
favours a broad reading of art. 83(1) UPCA.
Does the opt-out last for the life-time of the patent?
8-17
Some commentators have suggested that opted out European patents only remain opted out
for the seven-year transitional period (or if extended, for 14 years). The drafting of the UPCA is
not clear; art.83(1) UPCA states that:
“during a transitional period of seven years, an action … for a product protected by a European
patent may still be brought before national courts or other national competent authorities”
which on a literal reading suggests that after the end of this seven-year period, such actions
cannot be brought before the national courts. Likewise, art.83(2) UPCA states that:
“an action pending before a national court at the end of the transitional period shall not be
affected by the expiry of this period”
which also suggests that no actions can be brought before the national courts once the
transitional period has ended.
8-18
Also, art.71c(2) Brussels I Regulation (recast) provides that the rules on lis pendens and related
actions in arts 29 to 32 Brussels I Regulation (recast) shall apply where proceedings are brought
in the Court and in a national court of a Contracting Member State but only “during the
transitional period referred to in art.83 UPCA”. The fact that these UPCA-specific amendments
to the Brussels I Regulation (recast) limit the application of the lis pendens rules explicitly to the
transitional period supports the view that an opt-out only has effect until the end of the sevenyear (or 14-year) transitional period and that no actions relating to European patents can be
brought before the national courts thereafter.
8-19
On the other hand, the fact that art.83(3) UPCA provides that an opt-out can be filed up until
one month before expiry of the transitional period supports the contrary view that the opt-out
is effective for the lifetime of the patent. Further, art.83(4) UPCA allows a patentee to withdraw
an opt-out “at any moment” rather than at any moment during the transitional period,
suggesting that the opt-out does not expire at the end of the transitional period.
15
16
17
With the exception of art.32(1)(i) UPCA which relates to actions concerning decisions of the EPO.
A distinction is made in art.32(1) UPCA between actions for revocation (art.32(1)(d)) and counterclaims for revocation
(art.32(1)(e)).
Folien Fischer v Ritrama (C-133/11) ECLI:EU:C:2012:664.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 128
