The Unified Patent Court on “Opt-Out”: First Reasoned Decision Now Available

Gleiss Lutz is excited to contribute to shaping the new unified European patent law: On 20 October 2023, the Helsinki Local Division of the Unified Patent Court (“UPC”) issued the reasoning of its much noticed “opt-out”-ruling. You can download the decision here.

The court ruled that where a patent has been opted out of the UPC during the “sunrise period”, a later “opt-in” is ineffective, if a national action concerning the patent is pending at the time the opt-out is taking effect (i.e. the start of the UPC-system on 1 June 2023). With reference to Art. 83(4) UPCA and Rule 5.8 RoP, the ruling convincingly sets out the reasons why a national litigation commenced before, and still pending at, the entry into force of the UPC blocks the withdrawal of the opt-out.

The ruling does not deal with the question whether an opt-out is also irreversible in case of a national litigation already completed before the start of the UPC-system. However, the considerations in the ruling support the conclusion that also this question would have to be answered in the affirmative. Thus, to be on the safe side, a patentee who wants to maintain the option to assert a patent in the UPC, which was the subject of national litigation before the start of the UPC-system, should refrain from an opt-out of the litigated patent. In case the opt-out took place already, any litigation strategy would have to accommodate the potential inadmissibility of a UPC action.

As the UPC dismissed the infringement action and the request for provisional measures for lack of competence, the decision did not have to address the multitude of other legal issues raised in the case, such as “long-arm” jurisdiction of the UPC and availability of a “springboard”-type of injunction against an artificial intelligence system, to name only two.  

This is an important win of our client Supponor, a market leader in virtual advertising technology, which Gleiss Lutz represented together with Hannes Snellmann and Hogan Lovells.