Short Summary
The Court of Appeal of the Unified Patent Court upheld a decision that an opt-out from UPC jurisdiction was invalid because it was not lodged by all proprietors of all national parts of the European patent. Neo Wireless GmbH & Co. KG (Neo) had argued that the opt-out filed by Neo Wireless LLC (USA) for European patent EP 3876490 was valid, but the Court ruled that Article 83(3) UPCA requires all proprietors of all national parts to lodge the opt-out application. The appeal was rejected, and the revocation action brought by Toyota Motor Europe was allowed to proceed before the UPC.
Detailed Summary
This case concerns the interpretation of Article 83(3) of the Agreement on a Unified Patent Court (UPCA) regarding the validity of an opt-out from the jurisdiction of the Unified Patent Court (UPC).
Facts: Neo Wireless LLC (Neo USA) was the owner of European patent application EP 3876490 for all designated states. On 7 March 2023, Neo USA transferred the German part of the pending patent application to Neo Wireless GmbH & Co. KG (Neo) via an Assignment Agreement, while the other national parts remained with Neo USA. On 30 March 2023, Neo USA filed an opt-out for 'all EPC states,' but this application was not filed on behalf of Neo, and no consent from Neo was annexed. Neo itself did not file an opt-out application for the German part. The European patent EP 3876490 was granted on 17 May 2023. Toyota Motor Europe NV/SA then brought a revocation action against the German part of the patent held by Neo before the Central Division Paris of the UPC. Neo filed a preliminary objection challenging the UPC's competence based on the alleged valid opt-out. The Court of First Instance rejected this preliminary objection, holding the opt-out invalid because not all proprietors of all national parts had lodged the application as required by Rule 5.1(a) RoP. Neo appealed.
Arguments: Neo argued that the wording of Article 83(3) UPCA only requires 'a proprietor' or 'an applicant' to file an opt-out, and that one applicant could validly opt out the entire European patent. Neo further contended that Rule 5.1(a) RoP, which requires all proprietors to lodge the opt-out, should be disregarded because the UPCA prevails over the Rules of Procedure in case of conflict. Neo also argued that requiring consent from all proprietors would unduly impair its ownership rights by forcing it into the UPC system.
Toyota argued that the use of 'a' or 'an' in Article 83(3) UPCA merely acknowledges that a European patent can have more than one proprietor, and does not imply that any single proprietor can opt out the entire patent. Toyota contended that since an opt-out must be declared for a European patent as a whole, all proprietors of each national part must declare the opt-out. Toyota further argued that Rule 5 RoP does not contradict the UPCA but merely specifies procedural requirements.
Court's Reasoning: The Court of Appeal applied the general rule of interpretation for international treaties under Article 31(1) of the Vienna Convention on the Law of Treaties, interpreting Article 83(3) UPCA in good faith, in accordance with the ordinary meaning of its terms, in context, and in light of its object and purpose. The Court noted that under Article 2(2) EPC, a European patent has the effect of a national patent in each designated state, and a European patent application may be transferred per state separately, meaning 'a' European patent may be held by more than one proprietor. The Court found the word 'a' or 'an' in Article 83(3) UPCA to be ambiguous—it could indicate the singular (only one proprietor needed) or the capacity (any proprietor can file, meaning all proprietors must file). The use of the plural 'they shall notify' suggested multiple proprietors. The Court reasoned that the purpose of the opt-out is to allow proprietors to remain outside the UPC system, and if only one proprietor could opt out, it would force other proprietors into the UPC against their will, equally impairing their rights. The Court rejected Neo's argument that its ownership rights would be disproportionately impaired, noting that the UPC merely provides a new forum and does not interfere with property rights themselves. The Court concluded that Article 83(3) UPCA must be interpreted to require that a valid opt-out application be lodged by or on behalf of all proprietors of all national parts of a European patent, and that Rule 5.1(a) RoP is in conformity with this interpretation.
The Court of Appeal rejected the appeal, confirming that the opt-out declared by Neo USA alone was invalid because Neo (the proprietor of the German part) did not also lodge the opt-out application. The revocation action brought by Toyota was therefore allowed to proceed before the UPC.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in Neo Wireless GmbH Co. KG vs Toyota Motor Europe is valuable context for structuring arguments or assessing risk in similar proceedings.
Related Cases
Rematec GmbH & Co KGvsEurope Forestry B.V.
The Court of Appeal of the Unified Patent Court refused leave to appeal against an order of the Local Division Mannheim that had rejected Rematec's two cost determination applications as time-barred and dismissed its applications for reinstatement. The Court held that an application for leave to appeal under Rule 157 in conjunction with Rule 221 of the Rules of Procedure is inadmissible insofar as it is directed against the rejection of a reinstatement application, since Rule 320.7 expressly precludes appeals against orders on reinstatement. The Court also rejected Europe Forestry's request to impose costs on Rematec, noting that cost reimbursement is generally not available in cost determination proceedings.
Rematec GmbH & Co KGvsEurope Forestry B.V.
The Court of Appeal of the Unified Patent Court refused leave to appeal against an order of the Local Division Mannheim that had rejected Rematec's two cost determination applications as time-barred and denied reinstatement into the missed deadlines. The Court of Appeal held that an application for leave to appeal under R. 157 and R. 221 RoP is inadmissible insofar as it challenges the rejection of a reinstatement application, because R. 320.7 RoP expressly excludes appeals against orders on reinstatement. No arguable grounds for leave to appeal were identified regarding the rejection of retroactive deadline extension requests.
Promosome LLC and The Scripps Research InstitutevsBioNTech SE, BioNTech Manufacturing GmbH, BioNTech Manufacturing Marburg GmbH, BioNTech Innovative Manufacturing Services GmbH, BioNTech Europe GmbH, Pfizer Manufacturing Belgium NV, Pfizer SAS, Pfizer AB, and Pfizer, Inc.
This order of the Court of Appeal of the Unified Patent Court concerns three appeals (UPC-CoA-146/2026, UPC-CoA-147/2026, and UPC-CoA-148/2026) relating to EP 2 401 365. The appellants, Promosome LLC and The Scripps Research Institute, sought a one-month extension of the deadline for lodging their Statements of grounds of appeal, citing heavy professional workload and school holiday periods. Both groups of respondents (BioNTech and Pfizer entities) opposed the extension. The Court of Appeal rejected the applications, holding that the circumstances relied upon were foreseeable and did not justify an extension of the procedural time period.
Kodak Holding GmbH, Kodak GmbH, Kodak Graphic Communications GmbHvsFujifilm Corporation
This is a procedural order from the Court of Appeal of the Unified Patent Court concerning European Patent EP 3 511 174. The Respondents (Kodak entities) requested a one-week extension of the deadline to file written comments on the Applicant's (Fujifilm's) request for rehearing. The Court granted the extension until 23 October 2026, finding the request admissible and well-founded because the Applicant had consented, the extension was brief, and the Respondents' representatives had been occupied preparing for a related oral hearing before the Düsseldorf Regional Court that was postponed shortly before the application was filed.
Huawei Technologies Co. Ltd.vsSercomm Italia SRL
This is a procedural order from the Local Chamber Munich of the Unified Patent Court concerning alternative service of process on Sercomm Italia SRL in a patent infringement action involving European Patent EP 3 611 989 B1. After multiple failed attempts to serve the Italian defendant at its registered business address, the rapporteur had previously ordered under Rule 275.2 RoP that the prior service measures constituted valid service. The present order addresses the fact that notification of that earlier order was unsuccessful and directs additional means of notification to ensure the defendant is informed.
Network System Technologies LLCvsQualcomm Incorporated, Qualcomm Technologies, Inc., Qualcomm Germany GmbH
The Court of Appeal of the Unified Patent Court rejected Network System Technologies LLC's (NST) applications for re-establishment of rights under R. 320 RoP. NST had sought to revive its late-filed appeals against the rejection of its R. 190 Applications (production of evidence) in three infringement proceedings against Qualcomm before the Munich Local Division. The Court held that NST failed to demonstrate that all due care had been taken, as the circumstances cited did not constitute exceptional circumstances or excusable error under the precedent set in AIM v Supponor.
Dealing with a patent challenge?
Whether it's a Section 3(d) rejection, a post-grant opposition, or a FRAND dispute, Arctic's patent litigation team has handled it. Get a strategy call.
Disclaimer: This page contains an automated summary based on publicly available judicial records. The content is generated for informational purposes only and does not constitute legal advice. Always verify details against the original source judgment before relying on this information for any legal purpose. If you believe any information is inaccurate, please contact us.