A Venetian surprise: Does the UPCA transitional period really require an opt-out to access national courts?
Simone Lorenzi
A Venetian surprise: Does the UPCA transitional period really require an opt-out to access national courts?
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| This Kat is looking you dead in the eye to ask: 'Are you absolutely sure you didn't need to file that opt-out?' |
The transitional period of the Unified Patent Court Agreement (UPCA) is widely understood to offer a safe harbor of choice. For a period of seven years, patentees holding "classic" European patents have rested on the comfortable assumption that they can freely choose between asserting their rights before the new Unified Patent Court (UPC) or sticking with familiar national courts.
However, a recent and rather startling decision from the Court of Venice issued on December 4, 2025 (English machine translation here), has taken a sharp axe to this conventional understanding. If this ruling gains traction, the "parallel system" might be much narrower than the patent profession thought.
The dispute and the ex officio intervention
The case began as a relatively standard patent infringement action. The plaintiff, Geoplast S.p.A., sued Daliform Group S.r.l. and TPS S.r.l. over the alleged infringement of Italian patent IT 1350609 and the Italian portion of European patent EP 1605113.
Crucially, the plaintiff had not exercised the UPCA "opt-out" mechanism for the European patent. Operating under the widespread assumption that Article 83(1) UPCA creates a concurrent jurisdiction, the plaintiff believed it was entirely free to choose the Italian national court to enforce its non opted-out EP.
The Court of Venice, however, had other ideas. Applying the rules of the UPCA, the judge proactively raised the issue of competence ex officio. The Court asked a fundamental question: does a national court actually have jurisdiction over a European patent if the patentee hasn't formally opted out?
The Court's logic: Exclusive until opted out
The plaintiff argued that the absence of an opt-out simply leaves both doors open: the patentee remains free to choose either the national judge or the UPC for any given case.
The Venetian judge firmly rejected this reading. Through a strict interpretation of Article 83 UPCA, the Court dismantled the idea of a freely available parallel system:
- The Principle of Exclusivity: The Court started from the premise that competence for non-unitary EP patents belongs, in principle, exclusively to the UPC under Article 32 UPCA.
- The Conditional Exception: While Article 83(1) does say that actions "can still be brought before national courts" during the transitional period, the Court held that this possibility is strictly conditioned by the rules of Article 83(3).
- The Waiver Requirement: According to the judge, to access a national court, the patentee must actively use the "possibility to waive the exclusive competence of the court". This waiver takes effect only upon registration in the UPC registry.
- No Free Choice: The Court concluded that "concurrent" competence does not mean a plaintiff can arbitrarily choose the forum for each single lawsuit. The judge reasoned that allowing such a free choice would subject defendants to the plaintiff's arbitrary decisions and create unacceptable legal uncertainty.
In the Court's view, the system is designed to establish competence in an unequivocal and knowable way: the UPC has exclusive jurisdiction unless a formal opt-out is registered. Because the plaintiff had not opted out, the Italian court formally declared its lack of jurisdiction over the EP patent in favor of the UPC.
This Kat's critique: Swimming against the UPC current
This decision is a fascinating piece of legal reasoning, but it represents a remarkable outcome that directly conflicts with the generally accepted interpretation of the UPCA.
More problematically, the Court of Venice appears to be entirely out of step with the ratio of Article 83 UPCA as interpreted by the UPC itself. The UPC has repeatedly confirmed that the transitional period was specifically designed to establish a truly parallel regime, not one strictly gated by the opt-out mechanism.
Consider the recent UPC case law:
- Mala v. Nokia (UPC_CoA_227/2024): The UPC Court of Appeal expressly validated the concurrent system. It confirmed that cases can be pending simultaneously before a national court and the UPC, triggering the lis pendens provisions of the Brussels I recast Regulation. This implies that a national court is a valid forum during the transitional period, even without an opt-out.
- AIM Sport v. Supponor (Order 12 Nov 2024): The Court of Appeal was unequivocal regarding the structure of the transitional regime, noting that Article 83(1) "sets out in general the jurisdictional regime that applies during the transitional period," confirming it as an intentionally parallel system.
- Dish v. Aylo (UPC_CoA_188/2024): In these disputes, defendants argued that filing parallel patent infringement actions before the UPC and a national court (in Munich) constituted an abuse of right. Both the Court of First Instance and the Court of Appeal firmly rejected this, finding no abusive conduct in utilizing the concurrent jurisdiction explicitly permitted by the UPCA.
Final thoughts
The Venetian interpretation forces a rigid, binary paradigm: either you opt-out and use national courts, or you don't opt-out and are strictly bound to the UPC. The judge’s desire to protect defendants from "arbitrary" forum shopping is intellectually understandable, but it rewrites the procedural compromise that underpinned the creation of the UPCA's transitional period.
If this restrictive interpretation spreads to other national courts, it could strip patentees of the flexibility they thought they had, forcing a massive wave of litigation straight into the UPC's docket. For now, this Kat will be watching closely to see if this surprising decision is appealed, or if it remains an isolated anomaly in the lagoon city.