CoA of the UPC, CoA of the UPC, decision of 12 November 2024, UPC_COA_489/2023 and 500/2023 – AIM Sport Development / Supponor et al.

CoA of the UPC, decision of 12 November 2024, UPC_COA_489/2023 and 500/2023 – AIM Sport Development / Supponor et al.

I. Fact of the Case

The patent in suit had been opted out on 12 May 2023 (during the “sunrise period”). The opt-out was entered on the UPC register on 1 June 2023. On 5 July 2023, the Plaintiff applied to withdraw the opt-out.  On the same day, the Plaintiff filed an infringement action regarding the infringement of the patent in suit and an application for provisional measures against the Defendants. The Local Division Helsinki dismissed the infringement action and the application for provisional measures on the grounds that the UPC has no jurisdiction due to its opt-out of 12 May 2023. The withdrawal is ineffective because, at the time of the opt-out and the withdrawal of the opt-out, actions brought in 2020 were still pending before the German national courts.

II. Decision of the Court of Appeal

The Court of Appeal overrules the decision of the court of first instance.

The wording, structure, object and purpose of Art. 83 UPCA lead to an interpretation of the phrase “Unless an action has already been brought before a national court” in Art. 83 (4) UPCA as referring to an action brought before a national court during the transitional regime. Earlier national actions (prior to the entry into force of the transitional regime) are not covered by the restrictions on withdrawal of the opt-out.

The Court of Appeal referred to the rules of interpretation set out in Art. 31 (1) of the Vienna Convention on the Law of Treaties when interpreting Art. 83 UPCA and held that the term “action” in Art. 83 (4) UPCA is not to be construed in isolation but in the context of Art. 83 UPCA as a whole. In this respect, the Court sees no reason to interpret the term “action” in paragraph 4 differently from the term “action” in paragraphs 1, 2, and 3, i.e., as an action brought during the transitional period.

The Court of Appeal stated furthermore that this interpretation is also in concordance with the object and purpose of Art. 83 UPCA.

The possibility of withdrawal of the opt-out pursuant to Art. 83 (4) UPCA aims to enable a patent holder to reverse the consequences of an earlier opt-out and use the new UPC system with its advantages as soon as it has familiarized itself with the functioning of the UPC. The restrictions on the opt-out and withdrawal options under Art. 83 (3) and (4) UPCA intend to prevent an abuse of this system through an inadmissible change of jurisdiction. Given this purpose, the phrase “an action has already been brought before a national court” is to be interpreted as an action brought before a national court after the entry into force of the transitional regime. Abuse is not even possible before the existence of the transitional regime.

At the same time, the Court of Appeal clarified that any other interpretation would contradict the object and purpose of the opt-out and withdrawal system and lead to unequal treatment of holders of patents that have been subject to national proceedings in the past, with the consequence that if a patent holder whose patent had been subject to proceedings before a national court decided to opt-out, it could not withdraw its opt-out, thereby being deprived of the possibility of ever benefiting from the UPC system and its advantages.

Additionally, the Court of Appeal stated that the term “action” in Art. 83 UPCA refers not only to infringement and revocation actions but to all actions mentioned in Art. 32 UPCA for which the UPC has jurisdiction.

III. Conclusion

This decision increases the attractiveness of the UPC to patent holders by allowing them to return to the UPC system under certain conditions, even if their patents were subject to earlier national proceedings and they have opted out of the new system.

Anda Sopona