[The IPKat] The UPC Court of Appeal finds no temporal restrictions on its jurisdiction in XSYS v Esko

[Annsley Merelle Ward]

 

The UPCKat reaching again for some
more jurisdiction Back in early June, the UPC Court of Appeal handed down its decision in a dispute between XSYS and ESKO (UPC_CoA_156/2025) as to whether the UPC has jurisdiction to rule on alleged infringing acts that occurred prior to the date the UPC agreement (UPCA) came into force (1 June 2023), and before an opt out was withdrawn.   The UPCKats (Rebecca Daramola, Christina Guazzi and Isobel Barry, all of Carpmaels) return to report on another decision in which the UPC confirms its broad jurisdictional scope, driven by the goal of avoiding a fragmented European patent system.  

Over to Rebecca, Christina and Isobel:  

"The recent XSYS v ESKO decision builds on the UPC Court of Appeal’s reasoning in its decision in Fives v Reel (UPC_CoA_30/2024; 16 January 2025), where it held that the UPC has jurisdiction to decide on acts of infringement committed before the UPCA came into force, as long as the European patent being enforced had not yet lapsed at that date.

Background

ESKO is the proprietor of EP 3 742 231 (EP 231) relating to photo-curable printing plates. On 12 May 2023, EP 231 was opted out of the UPC but the opt out was later withdrawn on 26 August 2024. The next day, ESKO brought an infringement action against XSYS at the Munich Local Division in relation to alleged infringing acts that took place before and after the UPCA came into force, and before and after the withdrawal of the opt out of EP 231. XSYS lodged a preliminary objection on the basis that the UPC had no competence to decide on infringement actions relating to acts that took place before the UPCA came into force and/or between the date the UPCA came to force and opt out withdrawal of EP 231.

The Munich Local Division rejected the preliminary objection. XSYS appealed the decision, requesting that the infringement action should be dismissed to the extent that it relates to the period on or before the date of the opt out withdrawal of EP 231 (which of course includes the period before the UPCA came into force), or, alternatively, should be stayed pending a referral to the CJEU on the interpretation of the UPCA.

UPC competence extends to pre-UPCA activities

The Court of Appeal dismissed XSYS’s preliminary objection for several reasons, citing the decision in Fives v Reel. In particular, it held that the wording of Article 32(1) UPCA does not provide for any temporal limitation of the exclusive competence of the UPC concerning alleged infringements, whether those acts have taken place before or after the UPCA came into force. The absence of temporal limitations under Article 32(1) UPCA reflects the purpose of the UPCA to create a court that “prevent[s] the difficulties caused by a fragmented market for patents in Europe and the variations between national court systems.”

Similarly, with respect to the scope of application of the UPCA pursuant to Article 3 UPCA, there is no indication of a temporal limitation of the UPC’s competence to acts occurring after the UPCA came into force.

The Court of Appeal considered that it follows from Article 83 UPCA that during the seven-year transitional period, the competence of the UPC coexists in parallel with the national courts unless the patent is opted out of the UPC. Although a patentee could initiate an infringement action before the UPC or a national court, this option is limited to a choice of forum and does not lead to a partial or limited competence of either court with respect to the action or the time period for which the chosen court is competent. This position is consistent with Article 71c (2) of EU Regulation 1215/2012 (Brussels Ia Regulation), which provides for concurrent competence during the transitional period and doesn’t give exclusive competence to national courts for infringing acts prior to the UPCA coming into force. The Court of Appeal therefore concluded that the concurrent jurisdiction of the UPC and the national courts during the transitional period also applies to infringing acts that occurred prior to the UPCA coming into force.

Importantly, the Court of Appeal ruled that the UPC’s competence for infringing acts that occurred before the UPCA came into force does not contradict the principle of non-retroactivity of treaties under the principles of customary international law and Article 28 of the Vienna Convention on the Law of Treaties. In its view, the relevant provision on the Court’s competence is Article 32 UPCA, which does not raise a question of retroactivity. It therefore declined to make a referral to the CJEU on this point.

Finally, the Court of Appeal took the position that the UPC has competence to decide on infringing acts that occurred between the effective date of the opt out and the withdrawal of the opt out. When a patentee withdraws an opt out, they bring the patent back under the (exclusive) competence of the Court. The UPCA provisions on opt outs do not provide for a partial or limited withdrawal, and a different approach would lead to a fragmented system that is contrary to the objective and purpose of the UPCA.

As regards the law applicable to acts prior to 1 June 2023 (in particular, whether the substantive law of Article 25 et seq. UPCA and the measures, procedures and remedies as laid down under Article 56 UPCA would apply), the Court of Appeal emphasised that this question is distinct from the competence of the UPC, and has left it open for now, to be decided at a later stage of the proceedings.

Concluding thoughts

This recent decision of the Court of Appeal is in line with its decision in Fives v Reel and provides further clarity on the reasoning behind the UPC’s position that it has jurisdiction over infringing acts that occurred prior to the UPCA coming into force. This decision also highlights the UPC’s broader commitment to harmonise the European legal system.

Much like the recent UPC decisions concerning its long-arm jurisdiction (reviewed here), this decision should enhance the attractiveness of the UPC forum for patentees looking to enforce their rights in a single action, even where some or all of the alleged infringements predate the existence of the UPC."