Rule 5A – Application to remove an unauthorised application to opt out or unauthorised withdrawal of an opt-out

1. Without prejudice to the lodging of an Application to opt out or withdraw an opt-out in accordance with Rule 5, the proprietor of a European patent or the applicant for a published application for a European patent or holder of a supplementary protection certificate in relation to which an Application to opt out or withdraw the opt-out is entered in the register may lodge an Application to remove the entry of an unauthorised Application to opt out or withdrawal of the opt-out from the Registry setting out the reasons.

2. The Registrar shall mark the status of the Application to opt out or withdraw the opt-out entered in the register as subject to an Application for removal. The Registrar shall decide on the Application for removal as soon as practicable. If the final decision is to remove the Application to opt out or withdrawal of an opt-out the Registrar shall delete it in the register.

3. The decision on the Application for removal may be subject to an Application for review to the President of the Court of Appeal. The Application for review shall be lodged with the Registrar in one of the official languages of the European Patent Office, within one month of the notification of the challenged decision setting out the request, facts, evidence and arguments. If the Application for review is allowable, the President of the Court of Appeal shall order the Registrar to remove the opt-out or the withdrawal of the opt-out.

Case Law:

Court of Appeal

IPPT20260629, President UPC CoA, Silimed v Health & Aesthetics
Review rejected of Registrar’s rejection of application to remove an unauthorised opt-out (Article 83(3) UPCA, R. 5A RoP). Based on the submissions of the Applicant, it therefore, cannot be established that Polytech on 30 March 2023, when it filed the application to opt-out EP’193 from the exclusive competence of the Unified Patent Court under Art. 83(3) UPCA, was not entitled to be registered as proprietor of the patent in the national registers concerned at that time and, thus, must be considered to have been authorised to opt-out EP’193 from the exclusive competence of the Unified Patent Court pursuant to Art. 83(3) UPCA. An application to remove an unauthorised application to opt out pursuant to R. 5A RoP must a) either demonstrate that the person who filed the application to opt out, at the time of filing the application, was not the person shown in each national patent register for which the European patent was validated as the person entitled to be registered as the proprietor of the European patent, but that it was the applicant of the application to remove the unauthorised application to opt out, see R. 8.5(c) RoP, or b) if the persons mentioned under a) are identical, demonstrate that at the time of filing the application to opt out, the person shown in each national patent register for which the patent was validated as the person entitled to be registered as the proprietor of the European patent, under the law of each Member State for which the European patent was validated, was not entitled to be registered as the proprietor of the patent, but that it was the applicant of the application to remove the unauthorised application to opt out, see R. 8.5(a) RoP.

Court of First Instance

UPC CFI, LD Vienna, 13 September 2023, 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.