Two recently published decisions could pave the way for even more proceedings before the UPC.
The incentives come from completely different directions: In the case of AIM Sport v. Supponor Oy et al., the Court of Appeal of the Unified Patent Court (UPC) had to decide whether a national action brought before the entry into force of the Agreement on a Unified Patent Court (UPCA) on 1 June 2023, precludes the possibility of reassigning a European patent that the patent proprietor had previously withdrawn from the exclusive jurisdiction of the UPC (so-called "opt-out") back to the exclusive jurisdiction of the UPC (so-called "opt-in"). In its decision dated 20 October 2023 (UPC_CFI_314/2023, ORD_581208/2023), the Court of First Instance (Helsinki Local Division) had denied the patent proprietor this option and denied the UPC's jurisdiction accordingly.
The other proceedings pending before the Munich Local Division concern, among other things, the question of whether the UPC has jurisdiction for acts of infringement that took place before the UPCA entered into force.
Opt-in permissible despite national action
Brief summary of the facts: The patent proprietor (AIM Sport Vision AG) had already filed an infringement action before the Munich Regional Court in 2020 based on the patent in suit (EP 3 295 663 B1). The defendants in these proceedings responded with a nullity action before the Federal Patent Court (FPC). Both the infringement and nullity proceedings were still pending on 1 June 2023. The opt-out was declared for the patent in suit on 12 May 2023 – during the so-called "sunrise period". The opt-out was entered in the relevant register on 1 June 2023 in accordance with Rule 5.12 of the Rules of Procedure of the UPC (RoP). On 5 July 2023, the patent proprietor withdrew the opt-out and on the same day filed an action for infringement under Art. 32(1)(a) UPCA and an action for provisional measures under Art. 32(1)(c) UPCA with the Helsinki Local Division against Supponor Oy and others. The defendants were of the opinion that the withdrawal from the opt-out was not effective due to the still pending German infringement and nullity action.
As already outlined, the Helsinki Local Division agreed with this view and dismissed the actions for lack of jurisdiction of the UPC. The interpretation of Art. 83(4) UPCA and Rule 5.8 RoP was decisive.
Art. 83(4) sentence 1 UPCA reads:
"Unless an action has already been brought before a national court, proprietors of or applicants for European patents […] who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment."
Rule 5.8 RoP stipulates additionally:
"In the event that an action has been commenced before a court of a Contracting Member State in a matter over which the Court also has jurisdiction pursuant to Article 32 of the Agreement in respect of a patent or application contained in an Application to withdraw, prior to the entry of the Application to withdraw in the register or any time before the date pursuant to paragraph 5, the Application to withdraw shall be ineffective in respect of the patent or application in question, irrespective of whether the action is pending or has been concluded."
According to the Helsinki Local Division, these two provisions should be interpreted as also covering national actions brought before the UPCA enters into force on 1 June 2023. Neither Art. 83(4) UPCA nor Rule 5.8 RoP contained provisions on the date relevant for bringing the national action. This interpretation was also not contradicted by Art. 28 of the Vienna Convention on the Law of Treaties (VCLT), which regulates the non-retroactivity of (international) treaties. This is because parts of the UPCA had already been provisionally applicable since 2022 due to the Protocol on the provisional applicability of the UPCA, which is why the patent proprietor must have already been aware of the provision of Art. 83(4) UPCA when declaring the opt-out.
According to the Court of Appeal, however, the term "action brought before a national court" in Art. 83(4) UPCA only covers national actions brought under Art. 83(1) UPCA during the seven-year transitional period following the entry into force of the UPCA on 1 June 2023. This results in an interpretation according to the aim and purpose of the entire Art. 83 UPCA, which is entitled "Transitional regime". An interpretation in accordance with the object and purpose is already required on the basis of Art. 31(1) VCLT ("General rule of interpretation").
The term "action" in Art. 83(1) UPCA, which regulates the parallel jurisdiction between UPC and national courts for a transitional period of (at least) seven years, only refers to actions brought before national courts during the transitional period. This is already apparent from the wording at the end of Art. 83(1) UPCA, according to which actions "may still be brought" before national courts during the transitional period. The wording of Art. 83(1) UPCA does not refer to national actions that "remain pending".
Art. 83(2) UPCA clarifies that national actions brought outside the parallel jurisdiction between UPC and national courts – i.e. before the UPCA entered into force – remain unaffected by the end of the parallel jurisdiction. Therefore, the term "action" in Art. 83 UPCA should be interpreted uniformly to mean only those actions that were brought after the UPCA entered into force. This understanding also corresponds to the objective of Art. 83(3) and (4) UPCA, which aims to prevent abuse of the UPC system through an arbitrary change of jurisdiction by means of the restrictions on opting out and opting in. However, an abuse of the UPC system was not (or had not been) possible before the UPCA came into force.
Furthermore, the Court of Appeal clarifies that the term "action" does not only refer to infringement and nullity actions, but to all types of actions mentioned in Art. 32(1) UPCA and thus also to actions for provisional measures.
Munich Local Division: UPC also competent for acts of infringement before the UPCA entered into force
In the (main proceedings) decision of 15 November 2024 (UPC_CFI_15/2023, ORD_598479/2023) regarding EP 3 646 825 B1 in the legal dispute between Edwards Lifesciences Corporation and Meril GmbH and others, the Munich Local Division found that the UPC also has jurisdiction for acts of infringement committed before the UPCA came into force. This follows from Art. 3 lit. c) and Art. 32(1)(a) UPCA and in the absence of any conflicting transitional provisions. If this were to be seen differently, there would be a glaring gap in jurisdiction and legal protection after the end of the transitional period or the parallel jurisdiction between the UPC and national courts, as no court would then have jurisdiction for acts of infringement relating to European patents before 1 June 2023.
Practical consequences of the decisions
The order of the Court of Appeal gives a sigh of relief to those patent proprietors who want to reverse their – possibly premature – opt-out decision, but have so far been prevented from doing so by the order of the Helsinki Local Division. The number of European patents affected should not be underestimated.
The decision of the Munich Local Division also clearly positions itself "pro UPC" and encourages potential plaintiffs to also seek recourse to the UPC for acts of infringement prior to the entry into force of the UPCA.
