Some patent practitioners in Europe look forward to the Agreement on the Unified Patent Court (UPCA) entering into force, while others look forward to a complete failure of this project. Several legal issues are discussed in this context, one being whether the UPCA will also apply to legal rights which have been opted out by the right holder.
In one opinion, the consequence of opting out is that while the Unified Patent Court is no longer competent in that specific case, the UPCA itself remains applicable. The competent national court, in particular in infringement proceedings, would therefore be obliged to apply the provisions of the UPCA including the provisions with regard to substantive patent law. In other words, national law would be superseded by the UPCA, even if a patent is opted out. According to another view, if a patent is opted out, the UCPA no longer applies to the patent concerned and the competent national court has to apply the applicable national law only.
The debate is ongoing and might well influence future decisions by the users of the new system, e.g. the decision of right holders whether to opt out any of their protective rights once the UPCA enters into force. The Preparatory Committee of the UPC has now published on its website its own position. The conclusion drawn by the Preparatory Committee is replicated below:
“It is the Preparatory Committee’s view that if an application for a European patent, a European patent or a Supplementary Protection Certificate that has been issued for a product protected by a European Patent is opted out (or during the transitional period the case is brought before a national court), the Agreement no longer applies to the application for a European patent, the European patent or the Supplementary Protection Certificate concerned. As a consequence the competent national court would have to apply the applicable national law.”
However, it will be up to the competent national courts to either consent to or dissent from this conclusion, i.e. these national courts will have the final say.