Noerr wins landmark decision on the jurisdiction of the Unified Patent Court (UPC)

Noerr has won a landmark decision before the Court of Appeal of the Unified Patent Court (UPC) in Luxembourg. The decision allows potentially thousands of other European patents which are the subject of opt-out declarations and prior national patent infringement proceedings to bring claims before the UPC.

The appeal decision was achieved by an international team led by Ralph Nack and Niclas Gajeck (Noerr) and partners from the law firms Powell Gilbert, Roschier and Rospatt Osten Pross in a long-standing patent infringement dispute concerning virtual overlay technologies for our client AIM Sport.

The Helsinki Local Division, which handled the case at first instance, assumed a lack of jurisdiction over the patent infringement action filed for AIM Sport at the beginning of July 2023. This finding was based on a unilateral declaration by AIM Sport to exclude the patent from the scope of the UPC (referred to as an “opt-out”). AIM Sport subsequently withdrew this declaration, but the court of first instance deemed this withdrawal to be invalid. This case law of the Helsinki Local Division meant that European patents that were already the subject of national proceedings and for which an opt-out had been declared could no longer be heard by the UPC.

In its appeal decision of 12 November 2024, the UPC Court of Appeal backed AIM Sport’s legal opinion, overturned the first-instance decision and referred the case back to the court of first instance for a decision on the merits. This means that the path to the UPC is now also open to the large number of potential claimants who filed an opt-out and had already conducted national proceedings on the same European patent before 1 June 2023.

“This result is not only a massive success for our client AIM Sport, whose patent infringement case will now also be heard by the UPC on the merits, but also creates the fundamental prerequisite for the UPC to also hear actions concerning any other of the thousands of patents already asserted nationally and initially excluded from the scope of the UPC by opt-out declaration,” said Ralph Nack on the significance of the decision. “The decision by the Court of Appeal obtained by our team thus represents a milestone in the history of the UPC.”

Advisors to AIM Sport Vision AG: Noerr, Powell Gilbert, Roschier, Rospatt

Noerr team lead: Ralph Nack (partner, IP Litigation, Munich), Niclas Gajeck (senior associate, IP Litigation, Munich)