UPC-series: The opt-out system and its complications in practice

In its decision delivered on October 20, 2023 (UPC_CFI_214/2023)  the UPC local division in Helsinki rejected a preliminary injunction request by AIM Sports against Supponor, about advertising technology in sports stadiums. The patent was initially opted out from the UPC’s jurisdiction, but the opt-out was later withdrawn by the patent holder. In order to determine the validity of the withdraw, the specific time frame of its realization needs to be drawn.

In this case, AIM Sports did the withdraw of the opt-out after the infringement proceedings before the German court in 2022 (appeal pending), but before the entry into force of the UPCA and the introduction of the case before the Local Division of Helsinki. The point of interest here is Article 83 para.4 UPCA, which states that: “an opt-out can be withdrawn anytime as long as no action has been brought before a national court in respect of the application, patent or SPC subject to the opt-out.”

AIM Sports claimed that the withdrawn was valid, since the Article refers only to proceedings filed after the entry into force of the UPC. However, the judges ruled otherwise, highlighting that opt-out withdrawals would be invalid for patents for which parties filed national lawsuits prior to the UPC. Eventually, the Local Division in Helsinki rejected the injunction request by AIM Sports against Supponor.

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