Overview
The Court of Appeal of the Unified Patent Court (UPC) has delivered a decision clarifying the temporal scope of the UPC’s jurisdiction over European patent infringement actions. The decision confirms that the UPC can hear infringement actions concerning European patents, regardless of whether the alleged infringing acts occurred before or after the entry into force of the UPC Agreement on June 1, 2023. In addition, it can cover infringing acts that occurred in the period when a patent was opted out, provided the opt-out is subsequently withdrawn.
Background
Esko-Graphics (ESKO), proprietor of EP 3742231 relating to a method of curing photo-curable printing plates, initially opted out the patent from the UPC’s exclusive jurisdiction in May 2023, prior to the entry into force of the UPC Agreement (UPCA) on June 1, 2023. In August 2024, ESKO withdrew the opt-out and promptly initiated infringement proceedings against Xsys Italia (Xsys) before the UPC’s Munich Local Division, targeting acts alleged to have occurred both before and after the UPCA’s commencement, as well as during the opt-out period.
Xsys challenged the UPC’s jurisdiction for acts predating the UPCA and during the opt-out period, arguing that the UPCA should not apply retroactively and the opt-out and its withdrawal should only have prospective effect. The Munich Local Division rejected this challenge, and Xsys appealed.
Court of Appeal decision
The UPC Court of Appeal rejected the jurisdictional challenge for the following reasons:
- Interpretation of the UPCA: The Court of Appeal emphasized that Article 32(1) UPCA, which sets out the UPC’s competence, contains no temporal limitation. This aligns with the UPCA’s objective of creating a harmonized and unified system for patent litigation, thereby avoiding market fragmentation. The Court of Appeal’s decision is consistent with its decision in Fives v. Reel.
- Transitional regime: During the transitional period (seven years from June 1, 2023), both the UPC and national courts have concurrent jurisdiction, unless a patent has been opted out. The choice of forum does not limit the UPC’s jurisdiction over the subject matter or the time period of alleged infringement.
- Opt-out and withdrawal: Once an opt-out is withdrawn, the UPC regains full competence over the patent, including for acts occurring before the UPCA’s entry into force and during the opt-out period. This approach avoids fragmentation and supports the UPCA’s harmonization goals.
- Applicable law: The court distinguished between jurisdiction (competence) and applicable law, noting that the determination of which substantive law applies to pre-UPCA acts is a separate issue to be addressed at a later stage.
- No referral to the CJEU: The Court of Appeal declined to refer questions to the Court of Justice of the European Union (CJEU), finding that the outcome would not be altered, even with the most favorable interpretation of international law principles for the appellant.
Implications and key takeaways
This decision provides clarity and certainty for businesses operating in Europe, confirming the UPC’s role as a central forum for resolving European patent disputes. In particular:
- Transitional period offers forum choice, not limited jurisdiction: During the transitional period, patent holders may choose to bring actions before either the UPC or national courts, but this choice does not restrict the UPC’s subject matter or temporal jurisdiction.
- Opt-out and withdrawal mechanisms: The withdrawal of an opt-out restores the UPC’s full competence over the patent, including for acts that occurred during the opt-out period, provided that no national action is pending.
- Proactive management of patent rights: Companies should review their patent portfolios and litigation strategies in light of this decision, particularly when considering opt-outs and the timing of enforcement actions.