Neo Wireless v Toyota (UPC_CoA_79/2024)
Decision date:
04 June 2024
Osborne Clarke summary
- Neo Wireless LLC (Neo USA) was the owner of a European patent application (EP 490). On March 7 2023, Neo USA transferred the German part of the pending application to Neo Wireless GmbH & Co KG (Neo Germany) via an assignment agreement. On 30 March 2023, Neo USA filed an opt out for "all EPC states". This opt-out was not filed on behalf of Neo Germany, nor was Neo Germany's consent annexed to the opt-out application. Neo Germany had not filed an opt-out application with respect to the German part of the patent application.
- The patent was granted on 17 May 2023 and Toyota subsequently filed a revocation action in the Paris CD against the German part of the patent held by Neo Germany. In response, Neo Germany filed a preliminary objection pursuant to Rules 19.1(a) and 48 RoP, challenging the competence of the court on the basis of the opt-out.
- At first instance, the judge-rapporteur held that the opt-out declared by Neo USA was invalid because not all proprietors of the national parts of the patent had lodged the application to opt out as is required by Rule 5.1(a) RoP. The judge-rapporteur held that this rule was not superseding Article 83(3) UPCA, as that article must be interpreted to mean that all proprietors of or all applicants for a European patent must declare an opt-out.
- The Court of Appeal rejected Neo Germany's appeal, upholding the decision of the Paris CD. The Court of Appeal agreed that Article 83(3) UPCA required interpretation. The court took into account the transitional regime and the default position that there is an automatic transition to the jurisdiction of the UPC (unless the pre-UPC status quo is maintained by opting out of the UPC's jurisdiction). If there is more than one national part of a European patent, the opt out must pertain to all national parts. In a situation where not all of the national parts are held by the same proprietor, the Court of Appeal concluded that the position that all proprietors of all national parts must file an opt out application is in accordance with the default position.
- As a result of this reasoning, the Court of Appeal concluded that Neo USA did not lodge the opt out application on behalf of Neo Germany and therefore Neo USA's opt out was invalid. Neo Germany's appeal was rejected and the UPC retained jurisdiction over the revocation action.
Issue
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