Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-ou

1. The proprietor of a European patent (including a European patent that has expired) or the applicant for a published application for a European patent (hereinafter in this Rule 5 an “application”) who wishes to opt out that patent or application from the exclusive competence of the Court in accordance with Article 83(3) of the Agreement shall lodge an Application (hereinafter in this Rule 5 an “Application to opt out”) with the Registry.

(a) Where the patent or application is owned by two or more proprietors or applicants, all proprietors or applicants shall lodge the Application to opt out. Where the person lodging an Application to opt out is not recorded as the proprietor or applicant in the registers referred to in Rule 8.5(a) and (b), respectively, the person shall lodge a declaration pursuant to paragraph 3(e).

(b) The Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application.

2. An Application to opt out or an Application to withdraw an opt-out pursuant to paragraph 7 (hereinafter in this Rule 5 an “Application to withdraw”) shall extend to any supplementary protection certificate based on the European patent.

(a) Where any such supplementary protection certificate has been granted at the date of lodging the Application to opt out or the Application to withdraw, the holder of the supplementary protection certificate shall, if different from the proprietor of the patent, lodge the Application to opt out or the Application to withdraw together with the proprietor.

(b) Where any such supplementary protection certificate is granted subsequent to lodging the Application to opt out, the opt-out shall take effect automatically on grant of said supplementary protection certificate.

(c) Paragraphs 6 and 8 shall apply mutatis mutandis. For the purposes of paragraphs 6 and 8, reference to actions

(i) in respect of a European patent shall apply to all supplementary protection certificates based on that European patent, and

(ii) in respect of a supplementary protection certificate shall apply to the European patent on which such supplementary protection certificate is based and

(iii) in respect of a supplementary protection certificate shall apply to all other supplementary protection certificates based on the same European patent.

(d) For the avoidance of doubt, it is not possible to opt out supplementary protection certificates, whether granted by the authorities of a Contracting Member State or otherwise, based on a European patent with unitary effect.

3. The Application to opt out shall contain:

(a) the name of each proprietor or applicant for the European patent or application and of the holder of any supplementary protection certificate based on the European patent in question, and all relevant postal and, where applicable, electronic addresses;

(b) the name and postal address and electronic address of

(i) the representative appointed by the applicant or the proprietor in accordance with Article 48 of the Agreement or

(ii) any other person lodging the Application to opt out on behalf of the proprietor or the applicant and the mandate for lodging the Application to opt out;

(c) details of the patent and/or application including the EP publication number;

(d) details of any supplementary protection certificate granted based on the patent concerned, including the number; and

(e) for the purposes of paragraph 1(a), a declaration by or on behalf of each proprietor or applicant pursuant to Rule 8.5 that he is entitled to be registered in the national patent register.

4. Rule 8 shall not apply to Applications to opt out and to Applications to withdraw made pursuant to this Rule 5.

5. The Registrar shall as soon as practicable enter the Application to opt out in the register. Subject to paragraph 6, the opt-out which meets the requirements laid down in this Rule shall be regarded as effective from the date of entry in the register. If the requirements recorded in the register are missing or incorrect, a correction may be lodged with the Registry. The date of entry of the correction shall be noted in the register. The opt-out shall be effective from the date of correction.

6. In the event that an action has been commenced before the Court in respect of a patent and/or an application contained in an Application to opt out prior to the date of entry of the Application to opt out in the register or prior to the date of correction pursuant to paragraph 5, the Application to opt out shall be ineffective in respect of the patent and/or application in question, irrespective of whether the action is pending or has been concluded.

7. A proprietor of a patent or an application the subject of an opt-out pursuant to this Rule may lodge an Application to withdraw in respect of the patent or application, but not in respect of different states for which the European patent has been granted or which have been designated in the application. The Application to withdraw shall contain the particulars in accordance with paragraph 3. The Registrar shall as soon as practicable enter the Application to withdraw in the register and the withdrawal shall be regarded as effective from the date of entry in the register. Paragraphs 1(a) and 5 shall apply mutatis mutandis.

8. In the event that an action has been commenced before a court of a Contracting Member State in a matter over which the Court also has jurisdiction pursuant to Article 32 of the Agreement in respect of a patent or application contained in an Application to withdraw, prior to the entry of the Application to withdraw in the register or any time before the date pursuant to paragraph 5, the Application to withdraw shall be ineffective in respect of the patent or application in question, irrespective of whether the action is pending or has been concluded.

9. Where an application for a European patent subject to an opt-out pursuant to this Rule proceeds to grant as a European patent with unitary effect the opt-out shall be deemed to have been withdrawn and the Registrar shall as soon as practicable enter the withdrawal in the register.

10. A patent or application the subject of an Application to withdraw which has been entered on the register may not thereafter be the subject of a further Application to opt out.

11. The Registrar shall as soon as practicable notify the European Patent Office and the national patent office of any Contracting Member States concerned of the entries in the register pursuant to paragraphs 5 and 7.

12. Applications accepted by the Registry before the entry into force of the Agreement shall be treated as entered on the register on the date of entry into force of the Agreement.

Relation with Agreement: Article 83(3) and (4)

Case Law

IPPT20231020, UPC CFI, LD Helsinki, AIM Sport Vision v Supponor

UPC lacks competence because withdrawal of opt-out on 5 July 2023 is ineffective due to national infringement and invalidity proceedings brought before German national courts, which were pending on 1 June 2023 (Article 32 UPCA, Article 83 UPCA, Rule 5 RoP). Irrelevant whether same parties are involved in the national actions. Article 71c(2) Brussels I Regulation (recast) only concerns a situation of parallel jurisdiction and is not applicable where the competence of the UPC has been opted out. The reading used by the Court of Article 83(4) UPCA is also in line with the principle of non-retroactivity of treaties as stipulated under Article 28 VCLT.

IPPT20230913, UPC CFI, LD Vienna, CUP&CINO v Alpina Coffee
Application to opt-out (6 July 2023) is ineffective after commencement of the action before the Court (27 June 2023) (Rule 5(6) RoP). The blocking mechanism means that the jurisdiction of the UPC can no longer be withdrawn. Request for interim measures is an “action” within the meaning of Rule 5 and 5A RoP and Article 83(3) UPCA.