The decision to opt out a European Patent from the Unified Patent Court (UPC) system requires careful strategic considerations for patent holders. Among these considerations is the potential to later withdraw the opt-out to enable effective patent enforcement under the UPC's jurisdiction. However, the recent ruling from the Helsinki local division (the “Court”) underscores that the withdrawal is not feasible if national proceedings regarding the patent have already been initiated in a national court, even if these proceedings were filed before the UPC's inception in June 2023.
AIM Sport Vision AG, the patent holder, submitted an opt-out notice for European patent EP3295663 in May 2023. This action effectively removed the patent from the jurisdiction of the UPC. However, on 5 July 2023, following the entry into force of the Agreement on the Unified Patent Court (UPCA), the patent holder withdrew the opt-out notice. Simultaneously, an infringement action was filed, and a preliminary injunction was sought against Supponor Oy and others.
The preliminary injunction was sought based on the patent, which protected “the digital superimposition of an image onto another image” – a technique employed for example for advertising in football stadiums. AIM Sport Vision AG emphasised the urgency of the situation noting that the decisions concerning the acquisition by UEFA (the Union of European Football Associations) of the systems provided by the parties would take place in the days immediately following the oral hearing.
In their preliminary objection, the defendants, Supponor Oy and others, argued that the application for preliminary injunction ought to be dismissed due to the Court’s lack of competence. The defendants maintained that according to Article 83(4) of the UPCA and Rule 5.8 of the Rules of Procedure (RoP), the withdrawal of the opt-out of the patent was ineffective. This was because two national actions in Germany were pending both on the date of opt-out and on the date of its withdrawal.
The claimant contended that Article 83(4) cannot apply to national actions filed before the entry into force of the UPCA on 1 June 2023. The claimant argued that any contrary interpretation would violate in particular the non-retroactivity of international treaties as stipulated by the Vienna Convention on the Law of the Treaties (“VCLT”), dated 23 May 1969.
The Court exceptionally gave its ruling orally, immediately following the conclusion of the oral hearing on 21 September 2023. The Court dismissed the cases, finding that the withdrawal of the opt-out was ineffective due to national infringement and invalidity proceedings brought before the national courts in Germany. Consequently, the Court lacked competence to hear the case. The written decision was delivered on 20 October 2023 (UPC_CFI_214/2023).
The Court justified its ruling by referring to the wordings of the Article 83(4), which provides that the withdrawal is possible “unless an action has already been brought before a national court (…)”, and Rule 5.8 RoP…