A guide to the UPC and the UP - Flipbook - Page 139
8-20
The Preparatory Committee 18 has stated clearly that once a European patent has been opted
out, the opt-out is, subject to any withdrawal, for the whole of the life of the patent. 19 This is
consistent with its conclusion that if an application for a European patent is opted out or, during
the transitional period an action is brought before a national court, the UPCA no longer applies
and, as a consequence, the competent national court applies its national law. 20 During the
preparation of the RoP, the Drafting Committee also made it clear that the opt-out was for the
life of the relevant patent, including the time after the patent has expired, has lapsed or has
been withdrawn. 21
8-21
If as seems to be the more accepted view that the duration of an opt-out is not linked to that of
the transitional period but to the lifetime of the opted out European patent, then the effect of
the transitional regime will last much longer than seven (or 14) years after the entry into force
of the UPCA; opted-out European patents could still be subject to the exclusive jurisdiction of
the national courts for more than 20 years after the end of the transitional period. 22
Does the Court have Exclusive Jurisdiction Until the Opt-out is Triggered?
8-22
Related to the debate on the length of the opt-out period is another issue; some commentators
have suggested a conditional reading of the opt-out regime. They first point to the wording of
art.32(1) UPCA under which the Court has exclusive competence, thus replacing national courts,
for the matters governed by the UPCA. They then point to art.83(3) UPCA which states that:
“a proprietor … prior to the end of the transitional period… shall have the possibility to opt out
from the exclusive competence of the Court...”
to support the contention that, during the transitional period, the Court has exclusive
competence (or jurisdiction) over European patents until the proprietor files an opt-out, after
which the European patent will be subject to the non-exclusive competence (or jurisdiction)
of the national courts. 23
8-23
18
19
20
21
22
23
24
However, art.83(1) UPCA clearly provides for alternative jurisdiction of national courts and the
Court during the transitional period, regardless of whether there has been an opt-out.
Furthermore, the Preparatory Committee has stated that an opt-out will result in an “ousting”
of the jurisdiction of the Court on the basis that if it were otherwise, then there would in
practice be no difference between a European patent that was opted out under art.83(3) UPCA
and that which would pertain anyway under art.83(1)UPCA during the transitional period. 24
It is noteworthy that this issue could end up being decided by a national court if it arises,
for example, by way of a challenge to a counterclaim for revocation, with the further
possibility that the matter could be the subject of a reference to the CJEU.
Which consists of delegates from each of the Contracting Member States.
The FAQ on the Court’s website available at https://www.unified-patent-court.org/faq/opt-out, [Accessed 6 April 2017] stated
that “This follows clearly from the fact that an opt-out can be notified until the very last day of the transitional period”,
whereas art.83(3) UPCA requires a month in advance. However, this statement is not available anymore on the Court’s
website [Accessed 27 March 2023].
“Interpretative note – Consequences of the application of Article 83 UPCA” dated 29 January 2014, available at
https://www.unified-patent-court.org/en/news/interpretative-note-consequences-application-article-83-upca
[Accessed 27 March 2023]. See paragraph 8-24.
Note to r.5 RoP, 16th draft RoP, 31 January 2014, p.20.
An opt-out can sometimes have effects beyond the life-time of the European patent. Such is the case, for instance, for postexpiration litigation, or for SPCs based on an opted out European patent.
For a discussion on conditional or unconditional competence of the national courts under the transitional rules, see Pinckney
R, “Understanding the Transitional Provisions of the Agreement in the Unified Patent Court”, EIPR, 2015, 37(5), pp.268 to 277.
See https://www.unified-patent-court.org/faq/opt-out [Accessed 6 April 2017]. However, this statement is not available
anymore on the Court’s website [Accessed 27 March 2023].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 129
