Over at IPKat, Amerikat has been looking at the transitional provisions of the Unified Patent Court (UPC) Agreement and considering an interesting question. In this post, Amerikat has been considering Article 83, which gives a patentee the possibility to opt out of the ‘exclusive competence’ of the UPC if the patent was filed before the end of the transitional period, and to opt back in again at any time.

In brief, her question is this: does opting out of the ‘exclusive competence’ of the UPC still leave the UPC with non-exclusive competence, or does it leave the UPC with no competence at all (pun entirely unintentional)?

At IPCopy, we threw around some thoughts on this when we first noted quite how long the UK courts could still have competence as a result of Article 83 (Draft Article 58 back when we posted this), and we thought this was an opportunity to share them with you, and Amerikat!

Our first thought on realising the ambiguity over ‘exclusive competence’ was that, since Article 83(4) gives the patentee the option to opt back in whenever they like, the interpretation shouldn’t actually make much of a difference from the perspective of a patentee bringing an infringement action: the option to use the UPC will always be there because of Article 83(4).

But, for a third party wanting to bring a revocation action, the interpretation is potentially more significant.

If we interpret Article 84 as meaning that the opt-out still allows for ‘non-exclusive competence’ of the UPC, it is unclear where the third party is able to bring their revocation action. One interpretation is that the party bringing a revocation action against an opt-out-patent could choose whether to bring revocation at the national courts or at the UPC, with no say for the patentee? This just seems bizarre (not the first time this IPCopy writer has typed that phrase in reference to the UPC)!

Even worse, with the ‘non-exclusive-competence’ interpretation, it would get unbearably complicated if you consider fact that an alleged infringer can’t counter-claim for revocation in an action brought by an exclusive licensee, but must instead bring a separate revocation action against the patentee (See Article 47(5) and our post here).

A ridiculous example: A patentee opts out of the exclusive competence of UPC. An exclusive licensee of the opt-out-patent brings an infringement action against a third party and (based on a ‘non-exclusive-competence’ interpretation of Article 83) opts to use the UPC. The third party cannot counter-claim for revocation at the UPC because the action has been brought by the exclusive licensee. So, the third party must bring separate revocation proceedings against the patentee. Since this is an opt-out patent, the third party can elect to do this at the national courts. Infringement is therefore heard at the UPC, while revocation is heard at the national courts!

Super-bifurcation!

Essentially, we reached the same conclusion as Amerikat: interpreting Article 83(3) so as to leave the UPC with non-exclusive competence would lead to a right mess. It would therefore make far more sense to interpret ‘exclusive competence’ as meaning simply ‘competence’.

Of course, that doesn’t necessarily mean that Article 83 will be interpreted in this way, or that it was the intention of the legislators that it should be so. We’ve not yet found anything else in either the Agreement or the Rules of Procedure that leads us to one interpretation or another, so we will be interested to see any discussion that emerges from Amerikat’s post.

Feel free to comment below if you have any thoughts!