Retroactive Entitlement and Unauthorized Opt-Outs: The President of the Court of Appeal on Rule 5A RoP
The President of the Court of Appeal clarifies the temporal requirements for removing an unauthorized opt-out under Rule 5A RoP. A national entitlement decision ordering the transfer of a patent does not retroactively invalidate a prior opt-out.
When a successful entitlement action finally forces the transfer of a classical European patent, the new proprietor often moves quickly to consolidate control over the asset's jurisdictional fate. If the former proprietor filed an opt-out during the years of litigation, the new owner might seek to erase that procedural history entirely by having the opt-out struck from the register as unauthorized. In UPC-CoA-066/2026, the President of the Court of Appeal addressed exactly this scenario, clarifying how national entitlement judgments interact with the Unified Patent Court's opt-out regime.
How did the timing of the national entitlement decision affect the opt-out?
The dispute centered on EP 2 581 193, a patent relating to implant manufacturing. The former proprietor filed an application to opt out on 30 March 2023. Following years of litigation, the Oberlandesgericht Frankfurt am Main ordered the former proprietor to transfer all national parts of the patent to the applicant. This decision became final on 5 January 2026.
Relying on this judgment, the applicant lodged an application to remove the opt-out under Rule 5A RoP. The applicant argued that the former proprietor was never entitled to the invention and therefore lacked authorization to file the opt-out. The President of the Court of Appeal rejected this argument. The President noted that the German transfer decision, which was based on the Law on International Patent Conventions, only provided a claim to transfer the patent. The applicant failed to show that the operative part of the decision had any retroactive effect (reasons 23).
What must an applicant prove to remove an unauthorized opt-out under Rule 5A RoP?
The President of the Court of Appeal established a strict temporal test for assessing authorization. Under Rule 8 RoP, the authorized person is the one entitled to be registered as proprietor under the law of each Contracting Member State.
To succeed in removing an opt-out, an applicant must prove the legal situation exactly at the time of filing the application to opt out. The applicant must demonstrate either that the filer was not the person shown in the national registers at that time, or that the registered person was not actually entitled under national law at that time (reasons 19). Because the German judgment did not apply retroactively, the former proprietor must be considered to have been authorised to opt-out EP’193 when it filed the application in March 2023 (reasons 25).
Why did the Registrar initially reject the removal application?
Before filing the removal application in April 2026, the applicant had already lodged an application to withdraw the opt-out on 4 February 2026. The Registrar initially rejected the removal application on the basis of this sequence.
According to Rule 5 RoP, a withdrawal is effective from the date of its entry in the register. The Registrar reasoned that because the opt-out had already been effectively withdrawn by the applicant, there was no longer an opt-out left to remove. While the applicant argued that an opt-out can be removed regardless of a prior withdrawal, the President of the Court of Appeal ultimately upheld the rejection on the substantive entitlement grounds rather than this procedural sequencing.
What must practitioners evaluate before challenging historical opt-outs after UPC-CoA-066/2026?
When taking over a patent following a successful entitlement dispute, practitioners must carefully distinguish between withdrawing an existing opt-out and attempting to remove it as unauthorized.
A national judgment ordering the transfer of a patent does not inherently invalidate procedural acts taken by the previous proprietor. Unless the specific national law governing the entitlement dispute explicitly grants retroactive effect to the transfer, the former proprietor's opt-out remains authorized at the time it was filed. Consequently, new proprietors should rely on their own right to withdraw the opt-out, rather than attempting to rewrite the register's history through an application for removal.
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