The opt-out from the competence of the UPC (II)

… what is an action?

Concerning the opt-out from the jurisdiction of the Unified Patent Court (UPC), it is clear that this choice becomes unavailable once an action has been brought before the UPC.

Article 83(3) UPCA reads:

"Unless an action has already been brought before the Court [i.e. the UPC], a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period [of seven years plus a potential maximum of further seven years] ... shall have the possibility to opt out from the exclusive competence [read "competence" without the misleading term "exclusive”] of the Court.”

But, what is an "action"?

In a recent case before the local Division in Vienna, the term “action” was subject to scrutiny during preliminary injunction proceedings (which cannot be found in the CMS). One party contended that an application for provisional measures should not qualify as "an action" under Article 83(3) UPC. According to their argument, the German version of the UPC agreement employs the term "Klage," which, in their interpretation, excludes applications for provisional measures.

According to a report from the Oral Proceedings, the Vienna Division concluded that Article 83(3) of the UPC Agreement encompasses applications for provisional measures when referencing "actions" (German: Klage). This interpretation aligns with the language of Article 32 of the UPC Agreement, which includes "actions for provisional and protective measures and injunctions."

Our conclusions:

• The pivotal takeaway from this decision is that solely initiating proceedings for provisional measures does not circumvent the consequence of being bound to the UPC system indefinitely. 
• Essentially, once "an action" has been initiated before the UPC, whether by the patent holder or any other potential opponent (e.g., through filing a revocation action), opting out becomes impossible. This prohibition extends to actions seeking provisional measures as well.