A guide to the UPC and the UP - Flipbook - Page 146
8-49
There is no procedure allowing a third party to make a pre-action challenge to an opt-out. 70
Therefore, the only way to challenge whether an opt-out is effective and therefore whether,
despite the lodging of the opt-out, a central invalidity attack can be made on a European patent,
is to start proceedings. As noted, 71 the Registry will then check if the opt-out has been
registered and will give the claimant the opportunity to amend or withdraw its statement for
revocation. There is nothing further said in the RoP as to how such a matter would then be
handled; whether that would be an end of the matter (which would seem to be contrary to the
principles governing the Court) 72 or whether the preliminary procedure would then be engaged
with the decision being made by the judge rapporteur. It will have to be seen how the Court will
handle such matters and whether, in practice, such challenges prove possible since the burden
will be on the claimant to prove that the opt-out was ineffective, requiring documentary
evidence which would only be in the hands of the proprietor.
Withdrawing an Opt-out/Lodging an “Opt-in”
8-50
An opt-out from the jurisdiction of the Court is not irrevocable. An opt-out can be withdrawn
(also referred to as an “opt-in”) with respect to the European patent or European patent
application, but not in respect of different Contracting Member States for which the European
patent has been granted or which have been designated in the European patent application. 73
By way of such withdrawal, the proprietor, in effect, submits the European patent to the
jurisdiction of the Court (albeit alongside that of the national courts until the end of the
transitional period). Once the opt-out is withdrawn, the European patent or European patent
application cannot then be opted out again; 74 the right to opt out has been exhausted. 75
Timing of an Opt-in Application
8-51
Proprietors of European patents can withdraw their opt-out at any time. 76 However, in a similar
fashion to the scheme governing opt-outs, proprietors need to bear in mind that withdrawing
an opt-out is only possible if no action has been brought before a national court. 77 The wording
of art.83(4) UPCA indicates that it does not matter whether the national court action was started
before or after the UPCA entered into force, rather it is the existence of the earlier national
action which prevents the opt-out from being withdrawn. As such, it locks the European patent
into the national court system.
8-52
Again, as with opt-outs, no distinction is made in art.83(4) UPCA between the types of action. 78
R.5(8) RoP states that, where the action is one where the Court also has jurisdiction pursuant to
art.32 UPCA in respect of the patent or application contained in the application to withdraw the
opt-out, the loss of the right applies irrespective of whether the action is pending or has been
concluded. The effect is far-reaching; a withdrawal of an opt-out could be blocked by a potential
defendant to an infringement action starting and then quickly terminating proceedings in a
national court.
70
71
72
73
74
75
76
77
78
See Johnson A and Maunder L “The challenges of challenging a Unified Patent Court opt-out – a gap in the rules?”
Kluwer Patent Blog available at http://patentblog.kluweriplaw.com/2017/06/22/challenges-challenging-unified-patent-courtopt-gap-rules/ [Accessed 12 April 2023].
See paragraph 8-48.
art.42 UPCA. See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraphs 11-03 to 11-16.
r.5(7) RoP.
r.5(10) RoP.
“Responses to the Public Consultation on the [15th draft] Rules of Procedure of the UPC: Digest of Comments Received”
6 March 2014, p.15.
There is no limitation to the withdrawal of the opt-out taking place only during the transitional period.
art.83(4) UPCA.
See paragraphs 8-32 to 8-35.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 136
