Neo Wireless v Toyota Motor Europe (CoA, 4 June 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 4 June 2024 (UPC_CoA_79/2024, APL_9578/2024), the Court of Appeal dismissed Neo Wireless GmbH & Co KG’s appeal against the Paris Central Division’s order of 9 February 2024 (UPC_CFI_361/2023), which had rejected its preliminary objection to jurisdiction in Toyota Motor Europe NV/SA’s revocation action against the German part of EP 3 876 490. The Court held that an opt-out is valid only if lodged by or on behalf of all proprietors of all national parts of the European patent (paragraph 50).

The ruling settles a point of principle for any portfolio whose national parts have been assigned separately: the proprietor of a single national part cannot remove the whole patent from the UPC’s jurisdiction, and an opt-out lodged by one of them alone has no effect.

Facts and procedure

Neo Wireless LLC, a US company holding the European patent application for all designated states, assigned the German part to Neo Wireless GmbH & Co KG on 7 March 2023, keeping the other national parts (paragraph 1). On 30 March 2023 it lodged an opt-out for all EPC states, without acting on behalf of the assignee and without attaching its consent (paragraph 2). The patent was granted on 17 May 2023 (paragraph 3).

Toyota brought a revocation action against the German part before the Central Division. Neo Wireless GmbH challenged the UPC’s jurisdiction on the basis of the opt-out. The judge-rapporteur held the opt-out invalid because it had not been lodged by all proprietors as Rule 5.1(a) RoP requires (paragraphs 4 and 5), and granted leave to appeal.

The applicable law

Art. 83(3) UPCA allows the proprietor of or applicant for a European patent to opt out of the UPC’s exclusive competence during the transitional period. Rule 5.1(a) RoP requires all proprietors or applicants to lodge the application, Rule 5.1(b) RoP requires it to cover all national parts, and Rule 1 RoP gives the Agreement precedence over the Rules (paragraphs 16 to 18). The Court construed the Agreement under Art. 31(1) of the Vienna Convention on the Law of Treaties, having regard to Art. 2(2) EPC, under which a European patent takes effect state by state (paragraphs 21 to 23).

Question

May the proprietor of one or some national parts of a European patent validly opt out of the UPC’s jurisdiction for all national parts, including those it does not own?

Decision

No. The wording of Art. 83(3) UPCA does not settle the point: the reference to « a proprietor » may denote one acting alone or the capacity in which each must act (paragraphs 24 to 27). Nor is the context decisive. Those words govern when an opt-out may be made rather than who may make it, which leaves room for Rule 5.1(a) RoP (paragraphs 28 to 31).

Object and purpose decide the matter. The legislator made UPC jurisdiction the default (Arts. 1 and 32 UPCA), the opt-out being an exception (paragraphs 33 and 34). Allowing one proprietor to remove other proprietors’ national parts from the UPC, without their consent and possibly without their knowledge, would run counter to that fundamental legislative decision (paragraph 38), if not all of them lodge the application, the default position stays in place (paragraph 39). This outcome is neither unfair nor an undue restriction of property rights: the opposite reading would equally force on one proprietor the forum chosen by another, including through withdrawal of the opt-out (paragraphs 42 to 46). The difficulties stem from the split of national parts among different proprietors, not from the UPC’s jurisdiction as such (paragraphs 47 to 49). Rule 5.1(a) RoP is consistent with Art. 83(3) UPCA, Neo Wireless LLC’s opt-out is invalid and the appeal was dismissed (paragraphs 50 and 51).

Key points for practice

• An opt-out requires the participation of all proprietors of all national parts. Otherwise the patent remains subject to the UPC’s jurisdiction for all its parts.
• The Court gave precedence to a purposive reading of the Agreement, built on UPC jurisdiction as the default, over an ambiguous literal reading.
• Practical point: on a partial assignment of a European patent or application, the parties should regulate the opt-out decision by contract and lodge the application jointly, as a unilateral opt-out will have no effect.

Provisions applied

Agreement on a Unified Patent Court

Arts. 1, 32 and 83(3) and (4)

Rules of Procedure

Rules 1, 5.1(a), 5.1(b), 19.1(a) and 48

European Patent Convention

Art. 2(2)

Vienna Convention on the Law of Treaties

Art. 31(1)

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.