AIM Sport Development v Supponor (CoA, ORD_598488/2023, 12 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 12 November 2024, given in the joined appeals UPC_CoA_489/2023 and UPC_CoA_500/2023, the Court of Appeal held that only a national action brought during the transitional period prevents the withdrawal of an opt-out under Article 83(4) UPCA. An action brought before a national court before the transitional regime came into existence, whether still pending or not, does not bar withdrawal. The Court set aside the two orders of the Helsinki Local Division of 20 October 2023 declining jurisdiction and referred AIM Sport Development’s infringement action and application for provisional measures against Supponor back to the same panel. The ruling settles, for every European patent with a history of earlier national litigation, the condition for access to the UPC after an opt-out.

Facts and procedure

EP 3 295 663 was opted out on 12 May 2023, during the sunrise period, and the opt-out was entered in the register on 1 June 2023 (paragraph 1). On 5 July 2023 AIM applied to withdraw the opt-out and brought an infringement action and an application for provisional measures before the Helsinki Local Division (paragraph 2). Supponor contested the effectiveness of the withdrawal (paragraph 3). The Local Division declined jurisdiction because German proceedings commenced in 2020, still pending before the Bundespatentgericht and the Munich Higher Regional Court, rendered the withdrawal ineffective (paragraph 4). AIM appealed, seeking reversal and remittal. Supponor asked for the appeal to be dismissed (paragraphs 5 and 6). The hearing took place on 23 September 2024.

The applicable law

Article 83 UPCA sets out the transitional regime: for seven years, infringement and revocation actions concerning European patents may still be brought before national courts (paragraph 1), proprietors may opt out of the exclusive competence of the UPC (paragraph 3) and withdraw the opt-out “unless an action has already been brought before a national court” (paragraph 4). Rule 5.8 RoP deals with the effects of withdrawal. The Court construed the Agreement in accordance with Article 31 of the Vienna Convention on the Law of Treaties (paragraphs 11 et seq.).

Question

Do the words “unless an action has already been brought before a national court” in Article 83(4) UPCA also cover national actions brought before the transitional period began?

Decision

No. “Action” covers infringement and revocation actions and all actions under Article 32 UPCA within the UPC’s jurisdiction (paragraph 13). It bears the same meaning throughout Article 83(1) to (4): actions brought during the transitional period, which paragraph 2 protects beyond its expiry (paragraphs 11 and 14 to 20). Earlier national actions were not brought under the parallel litigation regime (paragraph 16), and the express reference to paragraph 1 in paragraph 5 does not alter this reading (paragraph 21). The purpose of the opt-out and withdrawal scheme, which fosters proprietors’ confidence and prevents abusive switching between jurisdictions, supports this construction, since abuse is only possible during the transitional period (paragraphs 24 to 28). Parallel proceedings are inherent in the transitional regime, and the lis pendens rules of the Brussels I recast Regulation address the risk of conflicting decisions (paragraphs 29 and 30). Supponor’s reading would also deprive of the right to withdraw any proprietor whose patent had ever been litigated, even at a third party’s initiative (paragraph 31). Rule 5.8 RoP, a lower-ranking instrument, cannot override the clear meaning of the Agreement (Rule 1.1 RoP, paragraphs 33 to 38), and the Court saw no reason to refer the matter to the full Court (paragraph 39). The impugned orders were set aside and the cases referred back to the same panel for reasons of efficiency and procedural economy (paragraphs 40 and 41).

Key points for practice

• National litigation commenced before the transitional regime, even if still pending, does not block the withdrawal of an opt-out (paragraph 40).
• The Rules of Procedure may fill a gap in the UPCA but cannot override its clear meaning (paragraph 35).
• Where a finding of lack of jurisdiction is reversed, referral back to the same first-instance panel is preferred (paragraph 41).
• Practical point: before withdrawing an opt-out, the check should focus solely on national actions brought since the transitional period opened and before the opt-out took effect.

Provisions applied

Agreement on a Unified Patent Court

Arts. 32 and 83(1) to (5)

Rules of Procedure

Rules 1.1, 5.8 and 5.12

Regulation (EU) No 1215/2012

Arts. 29 to 32 and 71c(2)

Other provisions

Vienna Convention on the Law of Treaties, Art. 31

Case law cited

Mala v Nokia, Court of Appeal, 17 September 2024

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.