A mock trial addressing the issue of the validity of an opt-out took place in Paris on 06th June 2016. It was organised by the Union pour la Juridiction Unifiée des Brevets (UJUB) and hosted by the MEDEF.
The trial opposed two companies, Haussmann La Riche and Generoso, over the revocation action of one of Haussmann La Riche’s patent. The action had been initiated by Generoso before the UPC central division. Haussmann La Riche however challenged the competence of the UPC, since it considered that it had correctly taken the necessary steps to “opt out from the exclusive competence of the Court”. Generoso on the other hand argued that the UPC was competent because the opt-out had been incorrectly. In fact, the opt-out had been made in the name of a corporate entity which no longer legally existed and did not name the patent co-owner. In the alternative, Generoso argued that Haussmann La Riche’s secretary had no capacity to register the opt-out, as only the head of the patent department and European patent attorney had the authorization to do so on behalf of the proprietors.
According to the UPC Rules of Procedure, the question whether the UPC has jurisdiction must be presented as a Preliminary objection (Rule 19 of the Rules of Procedure, to which Rule 48 in fine refers) within one month of the lodging of the Statement of claim. This question then falls within the competence of the judge-rapporteur (Rule 20), who for this matter is the presiding judge, except if the judge-rapporteur decided to refer the matter to the panel under Rule 102.
Both parties, represented by British, French, Dutch lawyers and patent attorneys presented their arguments to Marie Courboulay (Vice-president of the 3rd Chamber of the Tribunal de Grande Instance of Paris), the French judge-rapporteur who delivered her ruling on the issue of the validity of the opt-out at the end of the trial. She held, in line with the audience’s vote (though it was held in her absence), that the opt-out was indeed invalid and that the UPC was competent.
We await of course for your comments and views on the validity of this opt-out. Valid or not valid that is the question…