A guide to the UPC and the UP - Flipbook - Page 141
8-28
It follows from this that if a patent family comprises a Unitary patent together with a European
patent validated in a Contacting Member State which, at the date of grant, was not a party to
the UPCA 33 but which becomes a party at a later date, then there should be no possibility to opt
out that European patent out after the “new” Contracting Member State ratifies the UPCA. 34
However, both the Court and the national court of the country where the European patent is
designated would have concurrent jurisdiction for actions relating to the European patent in
that Contracting Member State during the transitional period. The rules on lis pendens and
related actions in arts 29 to 32 Brussels I Regulation (recast) will have to be applied to prevent
conflicting decisions. 35
8-29
Furthermore, where an opt-out has been lodged in relation to a granted European patent and,
at a later date, a Member State ratifies the UPCA where that European patent is also validated,
the opt-out will cover the validation of the European patent in the “new” Contracting Member
State as r.5(1)(b) RoP states that the opt out shall be made in respect of all of the states for
which the European patent has been granted. Accordingly, it is clear that the opt-out shall relate
to the European patent as a whole.
8-30
An opt-out does not apply to divisional or parent patents of a European patent; separate optout applications have to be filed. 36 It is therefore possible for a divisional of a parent European
patent to be opted out of the jurisdiction of the Court, whilst the parent European patent
remains subject to the jurisdiction of the Court and vice versa.
Timing of an Opt-out Application
8-31
In principle, proprietors of European patents and published European patent applications can
apply to opt out their European patents at any time up to one month before the end of the
transitional period. They can withdraw the opt-out (i.e. opt them back in again) at any time. 37
8-32
Proprietors of European patents, however, need to bear in mind that an opt-out is only possible
if no action has been brought before the Court prior to the application for the opt-out being
made. 38 No distinction is made in art.83(3) UPCA between the types of action 39 (i.e. whether
an infringement action, a pre-emptive revocation action or action for a DNI), whether for
provisional measures or an action on the merits, whether concluded or not, or whether the
same parties were involved.
8-33
R.5(6) RoP states that the loss of the right to opt out applies “irrespective of whether the action
is pending or has been concluded”. The purpose of these rules is to prevent, as far as possible,
different courts being asked to construe the same patent. 40 Thus, an opt-out is blocked for the
entirety of the transitional period once an action on the European patent has been started
before the Court, regardless of whether it is still pending.
33
34
35
36
37
38
39
40
Not all Contracting Member States may have ratified the UPCA when it comes into effect. The Court will have jurisdiction over
countries which have ratified and the unitary effect of a Unitary patent will only extend to those countries. A bundle of
European patents may therefore exist in parallel to the Unitary patent (see art.18(2) para.2 Unitary Patent Regulation).
r.5(1)(b) RoP refers to the application to opt out being made in respect of all of the states “for which the European patent has
been granted or which have been designated in the application”.
art.71c(2) Brussels I Regulation (recast). See chapter 6 (Jurisdiction, Competence and Forum Shopping)
paragraphs 6-62 to 6-63.
Divisional applications are not treated as part of the same application to opt-out given that divisionals are separate patents.
art.83(4) UPCA. See paragraphs 8-50 to 8-56.
art.83(3) UPCA.
Unless, the word “actions” is taken to mean the limited number of actions specifically mentioned in art.83(1) UPCA. The
references to “actions” in both arts 83(3) and (4) UPCA is another reason to prefer the conclusion that art.83(1) UPCA should,
despite the wording, apply to all actions. See paragraphs 8-15 and 8-16.
“Table with explanatory notes to the changes made by the Legal Group of the Preparatory Committee in the 17th draft of the
Rules of Procedure” 31 October 2014, pp.1 and 2.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 131
