A guide to the UPC and the UP - Flipbook - Page 147
8-53
It has been suggested that an opt-out could be deemed to have been withdrawn by the mere
lodging of a statement of claim with a division of the Court. The legal basis for that proposition
is the rules on lis pendens in the Brussels I Regulation (recast) 79 and the fact that art.83(4) UPCA
does not define what acts constitute such a withdrawal. It remains to be seen whether the
Court will endorse this opt-in route. 80 If the suggestion is correct, however, there will be no
forewarning that the proprietor is about to launch an action before the Court which would be
the case if the potential defendant was closely monitoring the opt-out register.
8-54
Again, as with opt-outs, should an exclusive licensee issue proceedings in a national court, the
proprietor will lose its ability to withdraw the opt-out.
The Application to Withdraw an Opt-out
8-55
The application procedure for applying for an opt-out applies mutatis mutandis to the
withdrawal of the opt-out 81 and is effective from the date of entry in the register. 82
The application must contain basically the same information as that required for an opt-out.
Where there are multiple proprietors, the application must be lodged by their representative
or someone who has the authority of all of them.
European Patent Applications and Opt-outs
8-56
Where an application for a European patent, subject to an opt-out, proceeds to grant as a
bundle of European patents, the opt-out will continue to apply. However, if a European patent
proceeds to grant as a Unitary patent, the opt-out is deemed to have been withdrawn. 83
Jurisdiction Issues During the Transitional Period
8-57
79
80
81
82
83
84
85
86
Forum shopping between national courts in relation to European patents using the rules in arts
29 to 32 Brussels I Regulation (recast) has been part of European patent litigation strategy for
many years. This will continue in relation to opted-out European patents, both during and after
the transitional period. 84 In relation to European patents which have not been opted out, where
the Court and national courts of Contracting Member States have concurrent jurisdiction during
the transitional period, Regulation (EU) No 542/2014 extended the rules on lis pendens and
related actions in arts 29 to 32 Brussels I Regulation (recast) to cover this period. 85 These issues
are discussed in chapter 6 (Jurisdiction, Competence and Forum Shopping). 86
See paragraph 8-34.
The Registry will, once a SoC or other initiating proceeding is lodged, check whether the patent concerned is the subject of
an opt-out and, if it is, will inform the claimant who may then withdraw or amend the SoC as appropriate (e.g. r.16(1) RoP).
There is no provision allowing the claimant to lodge a post-dated application to withdraw the opt-out.
R.5(7) RoP refers to rr.5(1)(a) and 5(5) RoP. See paragraphs 8-36 and 8-37. On the Case Management System, there is the
possibility of requesting a correction of a withdrawal of an opt-out.
r.5(7) RoP.
r.5(9) RoP.
Assuming that the opt-out lasts for the life-time of a European patent, see paragraphs 8-17 to 8-21.
art.71c(2) Brussels I Regulation.
paragraphs 6-64 to 6-79.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 137
