2025-08-25 - LD Munich - Network System Technologies v. Qualcomm et al.

Rule 19.1 (a) RoP does not mean that the Defendant of an infringement action may raise any objection in the context of an application to opt out and the withdrawal of an opt-out in order to argue that the withdrawal is invalid and a previously declared opt-out is valid. The withdrawal of an opt-out is at least effective if the requirements of Rule 5.3 and 5.7 RoP are met (in the case of more than one applicant or patent proprietor also Rule 5.1 RoP), the withdrawal is entered in the register and the requirements of Rule 5.8 RoP are not met. If this is the case, the resulting effectiveness of the withdrawal of the opt-out is binding for the Court and the parties. In particular, where a UPC representative is acting in accordance with Rule 5.3 (b) (i) RoP, a written mandate, a power of attorney or any other power or representation is not a necessary condition for the effectiveness of the withdrawal of an opt-out and the lack of such power of representation cannot be invoked with a Preliminary objection.

JR Voß (Munich LD) rejected Qualcomm's preliminary objection challenging the UPC's jurisdiction based on an allegedly invalid withdrawal of an opt-out. The court held that R. 19.1(a) RoP does not allow a defendant to raise any objection about an opt-out withdrawal — only formal requirements under R. 5 RoP can be challenged. A withdrawal is effective if: (1) R. 5.3 and 5.7 formal requirements are met, (2) it is entered in the register, and (3) R. 5.8 conditions are not met. Crucially, where a UPC representative acts under R. 5.3(b)(i) RoP, no written mandate or power of attorney is required — the representative's authority is presumed under R. 285 RoP. The opt-out procedure is unilateral; defendants have no standing to challenge the representative's authority, as R. 5A RoP is the exclusive remedy available only to the applicant or patent proprietor. Filing an infringement action before the UPC effectively ratifies any otherwise unauthorized withdrawal.