The Helsinki local division of the Unified Patent Court has now rendered its first decision since the Unified Patent Court started operating in June 2023. The decision relates to an application for provisional measures and follows an oral hearing held on 21 September 2023.

Exceptionally, the Court gave its decision orally on the day of the hearing due to the urgency of the application. The written decision was delivered on 20 October 2023 (UPC_CFI_214/2023).

In this case, the claimant, AIM Sport Vision AG, applied for a preliminary injunction against the defendants, Supponor Oy et. al., on the basis of European patent EP3295663. The patent relates to digitally overlaying one image with another image. One practical application of the invention is for digitally overlaying different advertisements on pitch-side advertising in broadcast football (“soccer”, for the uneducated).

The patent is a “classic” European patent granted and nationally validated before entry into force of the UPC Agreement, but readers will recall that the UPC has jurisdiction over all European patents unless they are opted out. In contrast, the UPC always has jurisdiction over European patents with unitary effect (“unitary patents”).

In the present case, the Court ultimately decided that it did not have jurisdiction to hear the case due to the ineffective withdrawal of an opt-out covering the patent in suit.

Question of competence and jurisdiction

The defendants argued that the application for provisional measures should be dismissed on the ground of non-competence of the Court due to ineffective withdrawal of the opt-out of the patent in suit according to Article 83(4) of the Agreement on the Unified Patent Court (UPCA) and Rule 5.8. of the Rules of Procedure (RoP).

The claimant had opted the patent out on 12 May 2023 and filed for withdrawal of the opt-out on 5 July 2023. The application for provisional measures was lodged by the claimant on the same day.

The defendants argued that two national actions in Germany, which were still pending both on the date of opt-out and on the date of its withdrawal, meant that the withdrawal of the opt-out was ineffective.

The claimant argued, amongst other things, that the UPC Agreement cannot apply to national actions filed before the entry into force of the Agreement on 1 June 2023 due to the non-retroactivity of international treaties under the Vienna Convention on the Law of the Treaties (“VCLT” on 23 May 1969).

Relevant law

Article 83(3) UPCA stipulates that, unless an action has already been brought before the UPC, proprietors/applicants of “classic” European patents have the option to opt out from the exclusive competence of the Court within a transitional period of 7-14 years from entry into force of the UPC Agreement.

Further, Article 83(4) UPCA stipulates that, unless an action has already been brought before a national court, an opt-out can be withdrawn at any time. Both actions (i.e. opt-out and withdrawal) take effect upon their entry into the UPC register.

Finally, Rule 5.8 RoP states that, in the event that an action has been commenced before a court of a contracting member state (of the UPCA) in a matter over which the UPC also has jurisdiction before the entry of the application to withdraw in the register or at any time before the date of the opt-out, an application to withdraw an opt-out is ineffective, irrespective of whether the action is pending or has been concluded.

Non-competence of the UPC due to ineffective withdrawal of the opt-out

In view of legal provisions mentioned above, the Court found that the conditions under which an opt-out cannot be withdrawn are clear. Furthermore, in the present case Article 83(4) UPCA is not contrary to the Vienna Convention’s principle of non-retroactivity, as the intention of Article 83(4) UPCA was clear and the national proceedings in Germany were pending on 1 June 2023 when the UPC Agreement entered into force. Thus, the Court lacked competence to hear the dispute based on the patent in suit due to the opt-out filed on 12 May 2023.

Conclusions

This case clearly demonstrates there is risk on both sides of the opt-out decision. Applicants and patentees need to consider whether the risk and consequences of opting out—and potentially being unable to withdraw the opt-out—are greater than those of leaving a patent within the UPC’s jurisdiction. This also highlights the important strategic decisions that need to be made regarding classical European patents.

The also demonstrates the ability of the UPC to process urgent matters efficiently. This important not only for claimants looking for remedies in urgent cases, but also for the defendants for whom uncertainty about the outcome of applications like this one can cause serious difficulties. Although the Court highlights that the oral decision given immediately after the hearing was exceptional, it shows effectiveness that has been long needed in patent enforcement in many European jurisdictions.