The transitional regime of the UPCA – opt-out – withdrawal of opt-out
First hearing at UPC Helsinki LD
The UPC Helsinki Local Division (CFI) held its first oral hearing on 21 September 2023 in a case where AIM Sport Vision AG (AIM) filed an infringement claim and an application for provisional measures against Supponor Oy, Supponor Limited, Supponor SASU, Supponor Italia SRL and Supponor España SL (Supponor) concerning EP 3 295 663 (’663) on 5 July 2025.
The patent in suit had been opted out on 12 May 2023 followed by a withdrawal of the opt-out on 5 July 2023.
Preliminary objection
In defence Supponor filed a preliminary objection under Rule 19 RoP contesting the competence of the UPC. They considered the withdrawal of the opt-out being ineffective owing to proceedings brought before German national courts, which were pending on 1 June 2023.
The pending cases (commenced in 2020) in Germany concerning ’663: an appeal on a decision of the LG München of 4 April 2022 (hearing scheduled for 12 October 2024); and an appeal on a decision of the Bundespatentgericht of 10 November 2022 (hearing scheduled for 5 December 2024).
Consequently, the withdrawal of the opt-out was ineffective in view of Art. 83(4) UPCA and Rule 5.8 RoP.
Article 83 Transitional Regime
(4) Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.
Rule 5 Lodging and Application to opt out and withdrawal of an opt-out
8. 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.
AIM stated that Art. 83(4) UPCA and Rule 5.8 RoP cannot apply to national actions filed before the entry into force of the UPCA on 1 June 2023. This would seriously restrict access to justice.
They also noted that this would be against Art. 28 VCLT.
Article 28 Non-retroactivity of treaties
Unless a different intention appears from the treaty or is otherwise established, its provisions do not bind a party in relation to any act or fact which took place or any situation which ceased to exist before the date of the entry into force of the treaty with respect to that party.
Supponor countered with a different interpretation of this Article. The German cases were still pending; they had not ceased to exist.
Oral decision in view of urgency of case
Owing to the urgency of the case the CFI handed down an oral decision immediately after the closing of the hearing.
The CFI found the withdrawal of the opt-out ineffective and dismissed the cases. A written decisionUPC_CFI_214/2023 – ACT_546571/2023 – ACT_551054/2023 was given on 20 October 2023.
The case proceeded to appeal after some unclarityUPC_CoA_500/2023 – APL_596892/2023, UPC_CoA_500/2023 – APL_596892/2023 regarding the time limit to file an appeal.
CoA overturns CFI decision
Before the CoA, the parties’ requests mainly followed the previous argumentation before the CFI. AIM considered that the term “action” in Art. 83 should be interpreted in a consistent manner in the article. Supponor considered that the term “action” has a different meaning considering the different circumstances in the different paragraphs of Art. 83 UPCA.
The CoA found that both parties rightly referred to the rules on interpretation of the VCLT additionally citing Art. 31 VCLT.
Article 31 - General rule of interpretation
1.A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.
They agreed to the consistency of the interpretation of the term “action”.
Art. 83 UPCA sets out the transitional regime and the provision “in a matter over which the Court also has jurisdiction pursuant to Art. 32 UPCA”. Rule 5.8 RoP must be understood to refer to an action brought before a national court during the transitional regime.
The CoA order issued on 12 November 2024UPC_CoA_489/2023 – APL_596007/2023, UPC_CoA_500/2023 – APL_596892 overturning the CFIUPC_CFI_214/2023 – ACT_545571/2023 – APP_1205/2025 decision. They referred the case back to the CFI2 and the case continues with an interesting twist on how a claim can be changed or a case can be amended.
