In a recent order, the Court of Appeal of the Unified Patent Court (UPC_CoA_79/2024) has issued a definitive interpretation of Article 83(3) of the Unified Patent Court Agreement (UPCA), stipulating that a valid opt-out from the UPC requires the participation of all proprietors of all national parts of a European patent.
Background of the Case
The case involved Neo Wireless GmbH & Co KG (referred to as ‘Neo’), which held the German part of the European patent EP 3876490, and Toyota Motor Europe NV/SA (referred to as ‘Toyota’). Neo contended that the patent had been validly opted out of the UPC's jurisdiction by Neo Wireless LLC, Wayne, USA (hereinafter: Neo USA) the owner of the remaining parts of the European patent. Neo filed an application for an opt-out. This application was not filed on behalf of Neo and neither was a consent thereto annexed to or uploaded as exhibit to the opt-out application. Neo has not itself filed an opt-out application with respect to the German part of the patent (application).
The Court’s Order
The UPC Court of Appeal firmly established that for an opt-out to be considered valid, it must be lodged by or on behalf of all proprietors of all national parts of the European patent. The decision emphasized that the opt-out process, as per the UPCA and supported by Rule 5.1(a) of the Rules of Procedure (RoP), cannot be correctly executed by partial representation or consent.
The Court clarified that the opt-out must involve all proprietors of a European patent across all designated states, reflecting the collective nature of patent rights under the UPCA.
The ruling confirmed that the procedural stipulations of the RoP are consistent with the UPCA, requiring unanimous participation in the opt-out process.
Implications for Patent Holder
This decision is crucial for patent holders who which to opt-out their patents. It underscores the importance of coordination among all proprietors of a European patent when considering an opt-out from the UPC’s jurisdiction. The order promotes a collaborative approach, preventing any individual proprietor from making decisions that impact the collective rights associated with a patent.
Patent holders must ensure they have the consent of all relevant parties before proceeding with an opt-out, thus avoiding potential legal challenges such as the one faced by Neo.
Key takeaways