Belgium: Defensive actions in UPC and national courts
The opt‐out possibility offered by Article 83 UPCA pays lots of attention to the choices patentees are facing with regards to their filing strategy. We focus here on defensive strategies in the new legislative framework, in particular on actions before national courts.
Coexistence between the UPC and national jurisdictions during the transitional period is governed by the UPCA and by the Brussels Regulation (Recast) (EU) 1215/2012.
Article 83.3 UPCA establishes the right to opt‐out (completely) of the UPC.
Article 83.4 UPCA further stipulates that unless an action has already been brought before a national court, proprietors of or applicants for European patents who made use of the opt‐out in accordance with paragraph 3 shall be entitled to withdraw their opt‐out at any moment.
Thus, if an invalidity action before a national court exists, patentees will not be able to use the UPC at all, including an infringement action.
Is such a legal effect compatible with the Brussels Regulation? Not sure. It is true that under the Regulation, the court first seized retains jurisdiction when the same action, involving the same parties, is subsequently filed in another EU court. Consequently, the existence of an invalidity action in a national court should not prevent the use of the UPC for an infringement action.
In any event, Article 83 deals with the specific opt‐out context. But what about the more general context, namely the impact of an existing action before a national court, where no opt‐out has been requested?
Furthermore, what is the impact of actions before national courts pending at the time of the UPC inception?
These uncertainties make it difficult for parties to implement a defensive strategy. Is it worth investing in an invalidity action in a national court, before entry into force of the UPC? Assuming such an action impacts patentees' choices at all, will it completely prevent the use of the UPC or only preclude the use of the UPC for a nullity action?
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