Case Law
Rule 5: Lodging of an Application to opt out and withdrawal of an opt-out

Court of First Instance - Munich (DE) Local Division, Order dated 08/05/2024, Volkswagen AG (Case/ Registry number: UPC_CFI No.513/2023, ORD_12486/2024)
Example of decision on the withdrawal of an opt-out: “Indeed, Rule 5.3(b)(i) RoP clearly distinguishes the case of an application filed by an authorised representative under Art. 48 UPCA from that of an application filed by “any other person lodging the application to opt out on behalf of the proprietor”. It is only in this second and different case that rule 5.3(b)(ii) RoP provides that the representative must also attach to the request “the mandate for lodging the application to opt out”. The withdrawal of the opt-out was therefore validly filed on behalf of NST by a representative included in the official list of patent attorneys kept by the Registrar pursuant to Art. 48.3 UPCA and is therefore effective upon its entry into the Register - which took place on 20.12.2023 - in accordance with Rule 5.7 RoP and Art. 83.3 UPCA.”

Court of First Instance - Helsinki (FI) Local Division, Order dated 20/10/2023, AIM Sport Vision AG v. Supponor Oy/Limited/SASU/España SL/Italia SRL (Case number UPC_CFI_214/2023, ORD_572699/2023 and ORD_581208/2023->https://www.unified-patent-court.org/en/node/458)
Example of decision concerning an application to opt out: “Furthermore, when the claimant made use of its right of waiver based on Article 83(3) UPCA, it not only took a strategic decision to remove itself from the jurisdiction of the UPCA, but also took that decision in the knowledge of the consequences that such a waiver would have for the continuation of the proceedings, having regard to actions previously brought before the national courts of a Contracting Member State. Following the waiver, only the national courts had jurisdiction to hear the actions concerning EP663, on the basis of Article 83(1) UPCA and, as actions had already been brought before a national court, the claimant prevented himself from withdrawing the waiver. If the claimant had wished to make use of the parallel jurisdiction during the transitional regime, he/she could have decided to remain passive and not withdraw. However, the claimant actively filed a request for waiver, thereby placing him/herself under the specific regime of the waiver but also under the conditions of effectiveness of a subsequent withdrawal of the waiver.
This blocking of the effective withdrawal of the opt-out is clear from the wording of article 83(4) of the UPC, but it is even clearer when that article is read in conjunction with article 5.8 of the Rules of Procedure. The Court notes that the Claimant in no way contends that the Rules of Procedure would conflict with the UPCA and that, therefore, the Rules of Procedure can be used to clarify the wording of Article 83(4) of the UPCA. Therefore, on the basis of Article 83(4) UPCA and Rule 5.8 RoP the withdrawal of the opt-out in respect of EP663 by the applicant is not possible and is in principle ineffective.”