A guide to the UPC and the UP - Flipbook - Page 142
8-34
The blocking effect of bringing an action in the Court is therefore more far reaching than the
rules on lis pendens contained in the Brussels I Regulation (recast) 41 which provide that the
second court seized must decline jurisdiction in favour of the court first seized in proceedings
between the same parties involving the same cause of action, the effect ending with the
termination of proceedings, subject to res judicata. This was deliberate on the part of the
Drafting Committee 42 but may open up problems (or opportunities) for litigants, particularly in
relation to the withdrawal of opt-outs. 43
8-35
Finally, it should be noted that should an exclusive licensee issue proceedings under art.47(2)
UPCA before the Court, the patent proprietor will lose its ability to opt out as a result of the
action taken by the licensee. Art.47(2) UPCA provides that the licensee must give prior notice to
the proprietor of the patent, but there is no provision for prior consent to be given. 44 This is an
issue that should be addressed by the parties in any licence agreement.
The Application for an Opt-out
8-36
To apply for an opt-out, the patent proprietor or applicant must lodge an application with the
Registry in Luxembourg. The application, a standard electronic form available on the Court’s
Case Management System, must contain the information set out in r.5(3) RoP: 45
(a) The name of each patent proprietor or applicant and that of the SPC holder, and all
relevant postal and, where applicable, electronic addresses;
(b) The name and postal address and electronic address of:
i. The representative appointed by the applicant or the proprietor in accordance with art.48
UPCA; 46 or
ii. Any other person lodging the application to opt out on behalf of the proprietor or the
applicant and the mandate for lodging the application to opt out;
(c)
Details of the patent and/or application including the EP publication number; 47
(d) Details of any SPC granted based on the patent concerned, including the number; and
(e) A declaration, by or on behalf of each proprietor or applicant pursuant to r.8(5) RoP,
that they are entitled to be registered in the national patent register. 48
41
42
43
44
45
46
47
48
art.71c(2) Brussels I Regulation provides that arts 29 to 32 of the Brussels I Regulation apply where, during the transitional
period, proceedings are brought in the Court and in a court of a Contracting Member State. See chapter 6 (Jurisdiction,
Competence and Forum Shopping) paragraphs 6-64 to 6-75.
See the comment “The blocking-effect of pending actions has nothing to do with lis pendens” in the “Responses to the Public
Consultation on the [15th draft] Rules of Procedure of the UPC: Digest of Comments Received” 6 March 2014, p.13.
See paragraphs 8-50 and 8-56.
This rule is much more liberal than most current national patent laws that require prior consent to be given by the patentee.
Although, initially, it was proposed that there should be a fee to opt out each patent, that idea has been abandoned.
See chapter 23 (Legal Representation, Privilege and Code of Conduct) paragraphs 23-01 to 23-05.
In the Case Management System, “details” are auto-filled by the system – when providing the publication number –
and include information on the patent’s title and applicant; and filing and grant dates.
Given the reference to r.8(5) RoP seems to be referring to the national registers for patents and the EPO register for
applications, it is strange that r.5(3)(e) RoP refers just to national registers. It is assumed that it should also apply to the
EPO register.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 132
