UPC-series: Supponor vs AIM Sport: Opt in or opt out?

The Helsinki Division of the UPC recently decided upon the Supponor vs AIM Sport case, concerning patent used in advertising in football matches and declared itself as non-competent over this “classic” European Patent.

Pursuant to Article 83(3) UPCA, during the transitional period of six years the holders of a “classic” European Patent can opt-out from the UPC’s jurisdiction. The opt-out cannot be withdrawn in case proceedings have been initiated before ant national Court. If this is not the case, the patentee can withdraw the opt-out, thus making an opt-in at any given time. But what happens if the proceedings are pending before a national Court before the UPCA getting into force?

The Helsinki Division cut a line with its new order and made clear that even though the UPCA was not in force yet, the patentee had not the right to withdraw the opt-out. As a result, the choice of excluding the UPC’s jurisdiction was made once and forever, concerning this specific patent. Given that revocation and infringement procedures were pending on appeal before national Courts, the order drew emphasis to the wording of Article 83 (4) UPCA and Rule 5.8 RoP and confirmed that actions pending prior the entry into force of the UPCA, basically counteract the effect of the opt-in.

The UPC basically declared itself incompetent to decide upon this “classic” European Patent and indicated that European patents may be locked out the competency of the UPC for ever if not careful. Nevertheless, the order is expected to be appealed, so there is not a definite answer on this matter yet.

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