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 Case Law
Article 83 : Transitional regime

Court of Appeal - Luxembourg (LU), Order dated 12/11/2024, AIM Sport Development AG v. Supponor Oy, Supponor Limited, Supponor SASU, Supponor Italia SRL, Supponor España SL (Case/ Registry number: APL_596007/2023 & APL_596892/2023, ORD_598488/2023 & ORD_598489/2023)
Example of decision on the term ’action’ referred to in article 83 UPCA: "The term ‘action’ in Art. 83 UPCA refers not only to infringement and revocation actions, but to all actions mentioned in Art. 32 UPCA over which the UPC has jurisdiction. Considering the wording, structure, object and purpose of Art. 83 UPCA as a whole, the sentence “Unless an action has already been brought before a national court” in Art. 83(4) UPCA must be understood to refer to an action brought before a national court during the transitional regime."

Court of First Instance - Nordic Baltic Regional Division, Order dated 29/10/2024, TEXPORT Handelsgesellschaft mbH v. Sioen NV (Case/ Registry number: App_10381/2024, ORD_16070/2024)
Example of decision on the transitional period for actions for a declaration of non-infringement: "According to Article 71c(2) of the Brussels I recast Regulation, Articles 29 to 32 of the Regulation shall apply where, during the transitional period referred to in Article 83 of the UPC Agreement (UPCA), proceedings are brought in the Unified Patent Court and in a court of a Member State party to the UPC Agreement. Article 83.1 UPCA provide that “[d]uring a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.” Although actions for a declaration of non-infringement are not explicitly mentioned in Article 83.1 UPCA, it is – according to the Court – obvious that the parallel jurisdiction during the transitional period provided for in Article 83.1 also include such actions. An action for a declaration of non- 6 infringement is, after all, the mirror of an action for infringement (cf. e.g. ECJ, 6 December 1994, C-406/92, ECLI:EU:C:1994:400, Tatry)."

Court of Appeal - Luxembourg (LU), Order dated 17/09/2024, Mala Technologies Ltd. v. Nokia Technology GmbH (Case/ Registry number: APL_26889/2024, ORD_43637/2024)
Example of decision on lis pendens: "1. In the light of the objective of Art. 29 to 32 of the Brussels I recast Regulation, Art. 71c(2) of the Brussels I recast Regulation must be interpreted as meaning that the provisions apply where, during the transitional period of Art. 83 UPCA, proceedings are pending before the UPC and a national court, even if the proceedings before the national court were initiated prior to the transitional period.
2. Art. 31 of the Brussels I recast Regulation does not depart from the general principle of Art. 29 of that Regulation, according to which a court is required to decline jurisdiction only if the proceedings involve the same cause of action and the same parties.
3. The request for a stay pursuant to Art. 30 of the Brussels I recast Regulation is to be regarded as a preliminary objection within the meaning of R. 19 RoP."

Court of Appeal - Luxembourg (LU), Order dated 04/06/2024, Neo Wireless GmbH Co. KG / Toyota Motor Europe (Case/ Registry number: UPC_CoA_79/2024, ORD_30505/2024)
Example of decision on the validity of an opt-out: “50. To conclude, in view of its meaning and purpose, Art. 83(3) UPCA must be interpreted such that a valid opt out application requires that it is lodged by or on behalf of all proprietors of all national parts of a European patent. Rule 5.1(a) RoP is in conformity therewith. It is undisputed that Neo USA did not lodge the opt out application also on behalf of Neo. The opt out declared by Neo USA is therefore invalid.”

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.”