UPC-series: The opt-out scheme explained

According to Article 83(3) of the Agreement on a Unified Patent Court (UPCA), the exclusive jurisdiction of the UPC regarding “classic” European patents, as well as holders of a supplementary protection certificate (SPC) issued for a product protected by a “classic” European patent, are subject to exceptions in the course of the next seven years. During this period, actions concerning European patents may still be brought before national courts. Furthermore, “classic” European patents and SPCs can be opted out entirely from the UPC’s jurisdiction either as an application or as a granted patent. The opt-out can be withdrawn at any time unless proceedings before a national court have commenced. In this case the opt-out is valid after the end of that action. These are not applicable in the case of a Unitary Patent.

These conditions need to be met for a valid opt-out:

  • The opt-out includes all states in which the patent was granted, or all stated in the relevant application. Partial opt-out is not possible.
  • Absence of any action before the UPC regarding this application, patent or SPC. Once the procedure has started, there is no coming back and the opt-out option is forbidden.
  • The opt-out application needs to be done pursuant to Rules 5 and 5A of the Rules of Procedure of the UPC.

In respect of the above, on 13 September 2023 the Vienna Local Division of the UPC held oral proceedings in an action on behalf of the Germany-based patent holder CUP&CINO Kaffeesystem-Vertrieb GmbH & Co. KG against the Austrian company Alpina Coffee Systems GmbH. The applicant sought provisional measures against an alleged infringement by the defendant. Even though the applicant had filed the preliminary injunction action, it later declared an opt-out regarding the patent in dispute. Both parties agreed that the opt-out request did not affect provisional proceedings, but it could possibly affect the main proceedings later on. The Applicant’s argument was that Rule 5(6) of the Rules of Procedure of the UPC does not apply in the case of preliminary injunction. The Court commented that patents for which a lawsuit has been filed can no longer be opted out of the UPC and asserted the application of Rule 5(6).

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