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EU – UPC: interpretative note on effect of opt-out

04 Feb 2014

Effect of an opt-out on the substantive patent law to be applied by the national court – Interpretative note of the Preparatory Committee of the Unified Patent Court of January 29, 2014

The unitary patent package has created many legal problems, some of them due to the fact that the unitary patent is based on different layers of European, international and national law. The complex interaction within these different layers is not always clear. In recent discussions the question has arisen whether the provisions on substantive patent law in the Agreement on the unified patent court (UPCA) are applicable to European bundle patents for which an opt-out has been declared during the transitional period pursuant to Article 83 (3) UPCA (cf. e.g. Schröer, GRUR Int. 2013, 1102, at p. 1107 f.). Although it will be the responsibility of each national court to determine its position in this respect, the Preparatory Committee has found it useful to give its opinion on this matter.

The Committee considers that the legislator has not chosen to achieve a uniform application of substantive patent law through obligatory harmonisation of national patent law. Rather it is the purpose of the Agreement to create a new jurisdiction in order for substantive patent law, to be interpreted by a court common to the contracting states exclusively (i.e. the Unified Patent Court). It has not been intended that national courts would have jurisdiction with regard to the Agreement itself.

The Committee’s note concludes that if a European patent is opted out, the Agreement no longer applies to the European patent concerned. As a consequence the competent national court would have to apply the applicable national law.

Read the interpretative note: → NEWS

Reported by Dr. Rudolf Teschemacher