A guide to the UPC and the UP - Flipbook - Page 140
Applicable Law Before the National Courts
8-24
Some commentators have suggested 25 that the national courts will have to apply
the substantive law provisions on infringement in the UPCA 26 to all European patents,
even if they have been opted out according to art.83(1) UPCA and to this extent, patent law
for the Contracting Member States has been harmonised by the UPCA. As noted above,
the Preparatory Committee has concluded that if 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 would continue to apply applicable
national law. 27
Procedure for Opting Out
What can be Opted Out?
8-25
The opt-out is available for granted European patents, applications for European patents
and SPCs that have been issued for a product protected by a European patent. It is also
available for expired European patents, 28 which is intended to deal with a post-expiry claim for
damages for pre-expiry infringement. An SPC subsequently granted on the basis of a European
patent which has previously been opted out will itself automatically be opted out on being
granted. 29 Only published European patent applications can be opted out. 30
8-26
An opt-out applies to all of the EPC Contracting States for which the European patent has been
granted (or which have been designated in the application for the European patent). 31 In other
words, a European patent bundle can only be opted out as a whole and, if the opt-out is
withdrawn, 32 it can only be withdrawn as a whole.
8-27
The intention behind this rule is clearly to safeguard the principle of uniform jurisprudence
and avoid conflicting decisions on the same subject matter by the Court on the one hand and
national courts on the other. Consistent with this, r.5(9) RoP provides that where an application
for a European patent subject to an opt-out proceeds to grant as a Unitary patent, the opt-out is
automatically deemed to have been withdrawn.
25
26
27
28
29
30
31
32
e.g. Tilmann W “The Transitional Period of the Agreement on a Unified Patent Court” JIPLP, 2014, Vol. 9, No. 7, p.575.
arts 25 to 27 and 29 UPCA.
For further information, see the discussion in chapter 7 (Applicable Law) paragraphs 7-83 to 7-89.
r.5(1)(a) RoP.
r.5(2) RoP.
r.5(3)(c) RoP. The UPC’s opt-out template further makes it clear that the publication number of the application must be
provided and not the application number. It follows that EP applications which have not been published yet and PCT
applications before having entered the regional European phase cannot be opted out.
r.5(1)(b) RoP. Between the 18th draft of the RoP and the final RoP a change was made to rr.5(1) and (7). The Administrative
Committee explained in the accompanying notes dated 8 July 2022 that an opt-out applying to only Contracting Member
States was inconsistent with the indivisibility of the application to opt-out and implied that the Court solely has jurisdiction
over Contracting Member States. As this is not the case, rr.5(1) and (7) were amended to apply to all EPC Contracting States
for which the European patent has been granted or which have been designated in the application.
r.5(7) RoP. See also paragraphs 8-50 to 8-56.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 130
