A Venetian surprise: Does the UPCA transitional period really require an opt-out to access national courts?
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| This Kat is looking you dead in the eye to ask: 'Are you absolutely sure you didn't need to file that opt-out?' |
The transitional period of the Unified Patent Court Agreement (UPCA) is widely understood to offer a safe harbor of choice. For a period of seven years, patentees holding "classic" European patents have rested on the comfortable assumption that they can freely choose between asserting their rights before the new Unified Patent Court (UPC) or sticking with familiar national courts.
However, a recent and rather startling decision from the Court of Venice issued on December 4, 2025 (English machine translation here), has taken a sharp axe to this conventional understanding. If this ruling gains traction, the "parallel system" might be much narrower than the patent profession thought.
The dispute and the ex officio intervention
The case began as a relatively standard patent infringement action. The plaintiff, Geoplast S.p.A., sued Daliform Group S.r.l. and TPS S.r.l. over the alleged infringement of Italian patent IT 1350609 and the Italian portion of European patent EP 1605113
Crucially, the plaintiff had not exercised the UPCA "opt-out" mechanism for the European patent
The Court of Venice, however, had other ideas. Applying the rules of the UPCA, the judge proactively raised the issue of competence ex officio
The Court's logic: Exclusive until opted out
The plaintiff argued that the absence of an opt-out simply leaves both doors open: the patentee remains free to choose either the national judge or the UPC for any given case
The Venetian judge firmly rejected this reading
- The Principle of Exclusivity: The Court started from the premise that competence for non-unitary EP patents belongs, in principle, exclusively to the UPC under Article 32 UPCA
.
- The Conditional Exception: While Article 83(1) does say that actions "can still be brought before national courts" during the transitional period, the Court held that this possibility is strictly conditioned by the rules of Article 83(3)
.
- The Waiver Requirement: According to the judge, to access a national court, the patentee must actively use the "possibility to waive the exclusive competence of the court"
. This waiver takes effect only upon registration in the UPC registry .
- No Free Choice: The Court concluded that "concurrent" competence does not mean a plaintiff can arbitrarily choose the forum for each single lawsuit
. The judge reasoned that allowing such a free choice would subject defendants to the plaintiff's arbitrary decisions and create unacceptable legal uncertainty .
In the Court's view, the system is designed to establish competence in an unequivocal and knowable way: the UPC has exclusive jurisdiction unless a formal opt-out is registered. Because the plaintiff had not opted out, the Italian court formally declared its lack of jurisdiction over the EP patent in favor of the UPC
This Kat's critique: Swimming against the UPC current
This decision is a fascinating piece of legal reasoning, but it represents a remarkable outcome that directly conflicts with the generally accepted interpretation of the UPCA.
More problematically, the Court of Venice appears to be entirely out of step with the ratio of Article 83 UPCA as interpreted by the UPC itself. The UPC has repeatedly confirmed that the transitional period was specifically designed to establish a truly parallel regime, not one strictly gated by the opt-out mechanism.
Consider the recent UPC case law:
- Mala v. Nokia (UPC_CoA_227/2024): The UPC Court of Appeal expressly validated the concurrent system. It confirmed that cases can be pending simultaneously before a national court and the UPC, triggering the lis pendens provisions of the Brussels I recast Regulation. This implies that a national court is a valid forum during the transitional period, even without an opt-out.
- AIM Sport v. Supponor (Order 12 Nov 2024): The Court of Appeal was unequivocal regarding the structure of the transitional regime, noting that Article 83(1) "sets out in general the jurisdictional regime that applies during the transitional period," confirming it as an intentionally parallel system.
- Dish v. Aylo (UPC_CoA_188/2024): In these disputes, defendants argued that filing parallel patent infringement actions before the UPC and a national court (in Munich) constituted an abuse of right. Both the Court of First Instance and the Court of Appeal firmly rejected this, finding no abusive conduct in utilizing the concurrent jurisdiction explicitly permitted by the UPCA.
Final thoughts
The Venetian interpretation forces a rigid, binary paradigm: either you opt-out and use national courts, or you don't opt-out and are strictly bound to the UPC. The judge’s desire to protect defendants from "arbitrary" forum shopping
If this restrictive interpretation spreads to other national courts, it could strip patentees of the flexibility they thought they had, forcing a massive wave of litigation straight into the UPC's docket. For now, this Kat will be watching closely to see if this surprising decision is appealed, or if it remains an isolated anomaly in the lagoon city.
Reviewed by Simone Lorenzi
on
Wednesday, May 06, 2026
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It seems to me that the Court of Venice believes that the UPC was created with a default opt-in.
ReplyDeleteIt is an interesting question whether, for patents and applications filed before the UPC came into force, a right to litigate before national courts can be taken away merely by inaction of the proprietor either before or after entry into force of the UPCA. That sounds like an absurd proposition, especially in the absence of any provision which expressly makes the UPCA applicable retroactively to such pre-existing patents and applications (ie covering all possible actions in relation to those rights, including those arising solely from acts committed prior to entry into force of the UPCA).
I tend to agree with the Court of Venice since Art. 83(3) states that a proprietor "shall have the possibility to opt out from the EXCLUSIVE competence of the Court" .
ReplyDeleteThe legislator would not have added the word "exclusive" if he intended to maintain a non-exclusive competence of the UPC without an opt-out.
The problem with this interpretation is that it would make the reference to the period of "seven years" in Art. 83(1) devoid of any purpose.
DeleteIf 83(1) is considered to merely "describe" what a proprietor with opt-out can do, "seven years" would be even INCORRECT, since the proprietor of an opted-out patent can bring actions before the national courts until the end of the patent term, and not for seven years only. So this interpretation makes Art. 83(1) firstly redundant, and secondly contradictory to Art. 83(3).
Unless, of course, our genius Italian judge is of the opinion that the opt-out of 83(3) is actually only valid for seven years, per 83(1), and after the seven years even opted-out patents must be litigated before the UPC. Let's see. You never know with Italy.
Also "the proprietor of an opted-out patent can bring actions before the national courts until the end of the patent term" is an assumption, or just a possible interpretation. The text does not say so verbatim.
DeleteThis decision is clearly wrong. The claimant brought an action for infringement before a national court, which is unequivocally allowed under Article 83(1) UPCA.
ReplyDeleteWhat is interesting is that Article 83(1) UPCA only concerns "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", which is markedly narrower than the list of actions falling under the exclusive competence of the UPC under Article 32(1) UPCA. Under a strict interpretation of these provisions, the patentee is free to bring an infringement action in the national court, but the accused infringer must bring their counterclaim for revocation in the UPC. This seems unlikely to be what was intended.
Another interesting thought is that the opt-out is only in respect of the "exclusive competence" of the UPC. This is widely interpreted as putting the patent outside of the jurisdiction altogether, but a different interpretation is that it is only, as stated, in respect of the exclusive competence, and that actions may still be brought before the UPC even if after an opt-out is filed (but they do not necessarily have to be).
DeleteIn other words:
- UPC has exclusive competence for everything listed in Art. 32(1) from the outset.
- Proprietor can opt out of this during the transitional period under Art. 83(3), allowing actions to be brought before national courts for the life of the patent - but they can still be brought in the UPC.
- During the transitional period, the specific actions listed in Art 83(1) can be brought before either UPC or the national courts.
Thank you for these interesting points!
DeleteThe 'forced bifurcation' scenario perfectly illustrates the danger of reading Art. 83(1) and Art. 32(1) in a hyper-strict, isolated manner. It is highly unlikely the drafters intended to create such a procedural nightmare during a 'transitional' period that was meant to provide flexibility to patentees.
As for the second comment, interpreting the opt-out as merely waiving the 'exclusive' nature of the UPC's competence—thus leaving both the UPC and national courts available for the life of the patent—is a fascinating and very creative take! While the conventional view (and the UPC's current practice) is that an opt-out completely removes the patent from the UPC's jurisdiction, your reading highlights just how much ambiguity is packed into the wording of Art. 83(3).
As @Patent Robot wisely noted in another comment: we can certainly all agree it could have been drafted better!
I guess that we can all agree that Art.83 UPCA could have been written better.
ReplyDeleteThere is a further problem with Art 83, that is Art 83(4). The withdrawal of the opt-out shall take effect upon its entry into the register. The withdrawal of the opt-out is thus apparently ex-nunc, but the patent has effects ex tunc. Can the UPC decide on infringement having occurred before the withdrawal of the opt-out?
ReplyDeleteWith an opt-out, a potential infringer may be brought before a national court, where the costs of litigation are lower than before the UPC. After withdrawal of an an-opt out, the potential infringer can only be brought before the UPC, where the costs of litigation are much higher.
With an opt-out, an action for non-infringement can be brought before a national court, where the costs are much lower. After withdrawal of the opt-out, an action for non-infringement can only be brought before the UPC, where the costs of litigation are much higher.
Is it correct from a constitutional point of view, that its is the proprietor which can decide the forum which is competent, knowing very well that the litigation before the UPC is way higher.
If an action for infringement has been dismissed by a national court, or a decision of non-infringement decided by a national court, in an UPC contracting state, can the proprietor opt-in and the decision of the national court be reversed by the UPC?
There are lots of problems with Art 83 UPCA which appear to have been willingly dodged.
I think that you have misunderstood Article 83(1) and the effect of withdrawal of the opt out.
DeleteYou say: "After withdrawal of the opt-out, an action for non-infringement can only be brought before the UPC, where the costs of litigation are much higher." This is wrong. Under Article 83(1), during the transitional period the revocation action can be brought in the national court, opt-out or not.
During the transitional period, the opt-out only has the effect of locking the patent out of the UPC. The absence or withdrawal of an opt-out does not do the converse of locking the patent out of the national court system.
After the transitional period, you are less wrong. The patent will either be opted out, so that the patent is locked out of the UPC; or it is not, so that the patent is locked out of the national court system. The proprietor does have some choice because they can file the opt-out, (until a month after the end of the transition period) and can withdraw it thereafter. But almost every legal system offers claimants a choice of forum, and they can choose the forum that is most advantageous to them, or most disadvantageous to the defendant.
As for the ex nunc/ex tunc dichotomy, I think it is quite clear that the UPC would be competent to decide on infringement having occurred before the withdrawal of the opt out. Nothing substantive changes as a result of the opt-out or its withdrawal, it merely governs the choice of forum.