UPC_CoA_066/2026 – Silimed (Applicant) v Polytech

Expert Commentary

Appeal decision of the Registrar Facts 1. On 25 November 2015, Polytech obtained EP 2 581 193. 2. In 2017, the applicant Silimed commenced litigation in Germany seeking the transfer of the European patent for all designated countries. 3. On 30 March 2023, Polytech files an opt-out. 4. On 5 January 2026, the German court issued a final decision confirming the first-instance judgment ordering the transfer of the patent. 5. On 9 January 2026, a company related to Polytech filed a revocation action in Germany. 6. On 4 February 2026, the Applicant lodged an application to withdraw the opt-out filed on 30 March 2023. 7. On 7 April 2026, the Applicant filed an application to withdraw the opt-out of 30 March 2023, arguing that Polytech was not entitled to the patent and therefore not entitled to do the opt-out. 8. On 10 April 2026, the Registrar rejected the request for removal of the opt-out on the ground that, in 2023, the opt-out had been filed by the owner of the EP. 9. The Applicant appealed. The President of the Court of Appeal 1. Referring to R. 5A RoP and R. 5.1 RoP, the President states that the person recorded as the proprietor in the relevant national register is entitled to do an opt-out unless it is proven that, at the time the opt-out was filed, another person was the proprietor of the patent. 2. As the decisions of the German Courts ordering the transfer of the patent do not have retroactive effect, the opt-out filed in 2023 was validly filed by the person who was, at that time, the proprietor of the patent. 3. The appeal is dismissed. Comment 1. A German Court ordered Polytech to transfer all national designations of an EP patent to the Applicant. The President of the Court of Appeal decides, in my opinion correctly, that the implementation of such court order does not have retroactive effect. 2. If retroactive effect is desired, entitlement proceedings would have to be commenced in each country. Even then, most national patent laws mitigate the retroactive effects (for example, with respect to licenses, security rights, etc.) 3. The logical consequence of this conclusion (the absence of retroactive effect) is that the opt-out filed before the transfer order remains valid. The new owner (the real inventor?) would have to w opt-in in order to use the UPC. 4. However, as can be seen from the facts, in the meantime the old owner Polytech (using a related company) has started invalidity proceedings in Germany. As a result, the Applicant (and the true inventor) could not opt-in anymore. 5. The applicant tried to repair this and obtained a preliminary injunction (PI) from the national Munich court ordering Polytech not to interfere with Applicant’s patent rights. However, even assuming that Polytech’s associate company had withdrawn the invalidity action, this would not have helped because Art. 83(4) UPCA is sufficiently clear: once, following an opt-out, an action has been brought before a national court, it is no longer possible to withdraw the opt-out. 6. In my view, the Applicant should have withdrawn the opt-out the hour following the transfer (assuming, as I believe, that in all UPC countries the ownership of the patent changes the moment of the written transfer). 7. Apparently, the applicant Silimed did not know about Art. 83(4) UPCA. That is not unusual. Two years ago, at a pharma conference in the US, I asked who had opted-out. All pharma companies present had, at the advice of their European counsel, opted-out because they feared central revocation of their patents and wanted to “wait and see” (or, as we say in Dutch: “looking the cat out of the tree” which, if you have ever seen a dog barking at the cat in the tree, can be a long time). When I said that it would be very easy for a generic company to make sure that they could never use the UPC (by filing a national revocation case, even if it were quickly withdrawn) nobody had been advised of this by their European counsel! 8. In this case as well, this proved fatal for the Applicant who should not have spent money on the request (and appeal) and on the PI proceedings in Munich, but should simply have filed the request to withdraw the opt-out an hour after the transfer.

Full Decision Text

Unified Patent Court Court of Appeal UPC_CoA-066/2026 Decision of the President of the Court of Appeal of the Unified Patent Court issued on 29 June 2026 **HEADNOTE** An application to remove an unauthorised application to opt out pursuant to R. 5A RoP must a) either demonstrate that the person who filed the application to opt out, at the time of filing the application, was not the person shown in each national patent register for which the European patent was validated as the person entitled to be registered as the proprietor of the European patent, but that it was the applicant of the application to remove the unauthorised application to opt out, see R. 8.5(c) RoP, b) or, if the persons mentioned under a) are identical, demonstrate that at the time of filing the application to opt out, the person shown in each national patent register for which the patent was validated as the person entitled to be registered as the proprietor of the European patent, under the law of each Member State for which the European patent was validated, was not entitled to be registered as the proprietor of the patent, but that it was the applicant of the application to remove the unauthorised application to opt out, see R. 8.5(a) RoP. **KEYWORDS** Opt-out, Application to remove an unauthorized application to opt out **APPLICANT** SILIMED Indústria de Implantes Ltda Rua Figueiredo Rocha, 374, CEP 21240-660, Rio de Janeiro, Brazil Represented by: John Brunner, Carpmaels & Ransford LLP, 1 Southampton Row, WC1B 5HA, London, United Kingdom **PATENT AT ISSUE** EP 2 581 193 **OPT-OUT REFERENCE** UPC_APP_12312/2023 Filed by: Polytech Health & Aesthetics GmbH Altheimer Straße 32, 64807, Dieburg, Germany Represented by: Mario Araujo Edo, Boehmert & Boehmert Pettenkoferstraße 22, 80336 München, Germany **DECISION OF THE REGISTRAR AT ISSUE** Decision of the Registrar, dated 10 April 2026, concerning the application to remove an unauthorised application to opt-out (UPC_APP_0012025/2026) **DATE OF LODGING OF THE APPLICATION FOR REVIEW** 18 May 2026 **SUMMARY OF FACTS:** 1. On 25 November 2015 Polytech Health & Aesthetics GmbH (hereinafter: Polytech) was granted a European patent relating to a method for manufacturing implants and implants produced thereby (EP 2 581 193, hereafter: EP’193). 2. In 2017, the Applicant initiated legal proceedings against Polytech seeking the transfer and consent to the re-registration of all national parts of EP’193 because of non-entitlement before the Landgericht Frankfurt am Main, Germany, and later the Oberlandesgericht Frankfurt am Main and the Bundesgerichtshof. 3. On 30 March 2023, Polytech filed an application to opt-out EP’193 from the exclusive competence of the Unified Patent Court pursuant to Art. 83(3) UPCA (UPC_APP_12312/2023). 4. By decision of 28 November 2024, which became final on 5 January 2026, the Oberlandesgericht Frankfurt am Main ordered Polytech to transfer to the Applicant all national parts of EP’193 and to agree to the corresponding re-registration with the respective national patent offices. 5. On 9 January 2026, PT H&A Management GmbH, a company belonging to the same group of companies as Polytech, filed an action for revocation of the German part of EP’193 before the Bundespatentgericht in Munich, Germany. 6. On 4 February 2026, the Applicant lodged an application to withdraw the opt-out filed by Polytech (UPC_APP_0004145/2026). 7. On 7 April 2026, the Applicant lodged an application for removal of the opt-out registered upon request of Polytech, arguing that the application was filed without authorization (UPC_APP_0012025/2026). The Applicant argued that, following the decision of the Oberlandesgericht Frankfurt am Main, Polytech was never entitled to EP’193 and the invention to which the patent relates. 8. By decision of 10 April 2026, the Registrar rejected the application for removal of an unauthorised opt-out, stating that, pursuant to R. 5.7 RoP, the withdrawal of an opt-out is regarded as effective from the date of entry of the withdrawal application in the register. Since the application to opt-out was effectively withdrawn by the Applicant on 4 February 2026, there was no longer an opt-out to consider for the Applicant’s application for removal. 9. On 18 May 2026, and after an extension of the time period for filing the application had been granted by the President of the Court of Appeal, the Applicant lodged an application for review of the Registrar’s decision. In its application, the Applicant requests that: I. the Registrar’s decision of 10 April 2026 rejecting the application to remove an opt-out be set aside, II. the Registrar be ordered to remove the opt-out of 30 March 2023 in relation to EP’193, III. only if requests I. and II. are granted, the Registrar be ordered to remove the withdrawal of the opt-out of 4 February 2026 in relation to EP’193. 10. According to the Applicant it follows from the wording of and the ratio underlying R. 5A.1 RoP that an opt-out can still be removed regardless of whether an application to withdraw has already been registered. 11. On 1 June 2026, the Applicant submitted a decision of the Landgericht München I, upholding an injunction against Polytech. According to said injunction, Polytech is restrained from interfering with Applicant’s property rights. The Applicant submits that in its reasoning the Landgericht München I pointed out that Polytech was never entitled to the EP’193. **REASONS FOR THE DECISION** 12. The application for reviewing the registrar’s decision is admissible but unfounded. 13. The Applicant has not established that the Registrar’s decision, to reject Applicant’s request is incorrect. 14. The application to opt out, filed by Polytech on 30 March 2023 cannot be considered to be an unauthorised application that gives rise for a removal from the register pursuant to R. 5A RoP. 15. Authorised to lodge an application to opt out, is the proprietor of the European patent subject of the application, Art. 83(3) UPCA, R. 5.1 RoP. 16. For the purpose of opt-out-proceedings under R. 5 RoP, the proprietor of the European patent is to be determined according to R. 8.5 RoP. 17. According to R. 8.5(a) RoP, it is the person entitled to be registered as proprietor under the law of each Contracting Member State in which the European patent has been validated who shall be treated as the proprietor whether or not such person is in fact recorded in the register of patents maintained in such Contracting Member State, R. 8.5 RoP. 18. However, according to R. 8.5(c) RoP, there shall be a rebuttable presumption that the person shown in each national patent register for which the European patent has been validated is the person entitled to be registered as proprietor of the European patent as the case might be. 19. It follows that an application to remove an unauthorised application to opt out pursuant to R. 5A RoP a) must either demonstrate that the person who filed the application to opt out, at the time of filing the application, was not the person shown in each national patent register for which the European patent was validated as the person entitled to be registered as the proprietor of the European patent, but that it was the applicant of the application to remove the unauthorised application to opt out, see R. 8.5(c) RoP, b) or, if the persons mentioned under a) are identical, demonstrate that at the time of filing the application to opt out, the person shown in each national patent register for which the patent was validated as the person entitled to be registered as the proprietor of the European patent, under the law of each Member State for which the European patent was validated, was not entitled to be registered as the proprietor of the patent, but that it was the applicant of the application to remove the unauthorised application to opt out, see R. 8.5(a) RoP. 20. In the application-at-hand, the Applicant neither demonstrated that Polytech was not shown as the proprietor of EP’193 in the national patent registers of the Contracting Member States for which EP’193 has been validated nor did it establish that Polytech was not entitled to be registered in the national registers of such Contracting Member States under the law of such Contracting Member States. 21. In order to substantiate that Polytech was not entitled to be registered as proprietor of EP’193 in the national registers, Applicant refers to the decision of the Oberlandesgericht Frankfurt of 28 November 2024. 22. By its decision, the Oberlandesgericht Frankfurt am Main ordered Polytech to transfer to the Applicant all national parts of EP’193 and to agree to the corresponding re-registration with the respective national patent offices. 23. Applicant did not show that this decision, which became final, and thus its order (operative part) effective, only on 5 January 2026, has, contrary to its wording, any retroactive effect. 24. Rather Art. II(5) (1) of the Law on International Patent Conventions (Gesetz über internationale Patentübereinkommen, IntPatÜG) on which the Oberlandesgericht Frankfurt based its decision, after the parties of the litigation had agreed that in accordance with Art. 14 Regulation (EC) No 864/2007 (Rome II Regulation) German law shall be applicable in the entitlement dispute with regard to all national parts of EP’193 (see Oberlandesgericht, decision of 28 November 2024 - 6 U 78/19, p. 12 seq.), does only provide for a claim to transfer the European patent from the non-entitled proprietor to the entitled proprietor but not for any retroactive effect, Sec. 894 Code of Civil Procedure (Zivilprozessordnung). 25. Based on the submissions of the Applicant, it therefore, cannot be established that Polytech on 30 March 2023, when it filed the application to opt-out EP’193 from the exclusive competence of the Unified Patent Court under Art. 83(3) UPCA, was not entitled to be registered as proprietor of the patent in the national registers concerned at that time and, thus, must be considered to have been authorised to opt-out EP’193 from the exclusive competence of the Unified Patent Court pursuant to Art. 83(3) UPCA. 26. As Polytech is not negatively affected by this decision, there was not need to give it an opportunity to be heard. **DECISION** The application for review of the Registrar’s decision of 10 April 2026 is rejected. This decision was issued on 29 June 2026. Dr Klaus Grabinski President of the UPC Court of Appeal

Key Holdings

• An opt-out is valid if filed by the recorded proprietor at the time of filing, even if later entitlement proceedings order a transfer.
• Court orders for patent transfer do not have retroactive effect on the validity of a previously filed opt-out.
• Once a national action has been brought before a national court following an opt-out, the opt-out cannot be withdrawn (Art. 83(4) UPCA).
• Timely withdrawal of an opt-out immediately after a patent transfer is crucial to avoid being locked out of the UPC system if a national action is subsequently filed.

Tags

• Opt-out
• Withdrawal
• Entitlement
• Procedural
• Appeal
• Retroactive Effect

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