On November 12, 2024, the Court of Appeal (CoA) of the Unified Patent Court (UPC) issued an order, clarifying the application of Article 83 of the UPC Agreement (UPCA). This order “re-opens” the door for European Patents which - according to the first instance - would have been permanently excluded from the competence of the UPC.
The case revolved around the withdrawal of an opt-out for a patent during the UPC's transitional period, challenging the interpretation of "action" within Article 83 UPCA. The central issue was whether a national court action, lodged prior to the UPC’s entry into force, affects the ability to withdraw an opt-out, thereby determining the UPC's jurisdiction over related patent disputes.
The term 'action' in Article 83 UPCA encompasses not just infringement and revocation actions, but all other actions over which the UPC has jurisdiction (such as actions for declarations of non-infringement etc.)
The CoA highlighted that Article 83 primarily addresses the transitional regime, allowing existing national court proceedings to continue unaffected by the newly established UPC jurisdiction.
In contrast to the reasoning of the first instance, the CoA specified that only actions brought during the transitional period restrict the withdrawal of an opt-out. This clarification prevents the retrospective application of the UPC's rules to actions commenced before the UPC came into force.
As a side remark: The Court of Appeal seemed to be convinced that "opting out from the exclusive competence of the court" actually means "opting out from any competence of the court." Even though it is common ground that this is what Article 83 of the UPCA actually implies, it still seems difficult to align with the actual wording. Also, on other occasions, the Court of Appeal appears to deviate considerably from the actual wording of Article 83 of the UPCA.
