Background

ESKO is proprietor of European patent 3 742 231 (hereafter “the patent”) relating to a method of curing photo-curable printing plates. On 12 May 2023, ESKO opted the patent out of the exclusive jurisdiction of the Unified Patent Court (UPC). On 26 August 2024, ESKO withdrew this opt-out, thereby bringing the patent back under the UPC’s jurisdiction.

The following day, on 27 August 2024, ESKO brought an action for infringement of the patent against XSYS before the Munich Location Division of the UPC. The action concerned acts XSYS were alleged to have taken place before and after the Agreement on a UPC (UPCA) entered into force on 1 June 2023 as well as before and after the opt-out withdrawal.

The Local Division ruled that the UPC had jurisdiction over the action under Art. 32(1)(a), 2(g) and 3(c) UPCA, without temporal limitation. It held that ESKO was entitled to bring the action for infringement before the UPC following the withdrawal of the opt-out.

The Local Division further clarified that the UPC’s competence extended to the entire period asserted in the action, both for claims for (alleged) acts of use before June 2023 (entry into force of the UPCA) and before 26 August 2024 (withdrawal from the opt-out). It emphasized that jurisdiction and competence are distinct from the applicable law and must be assessed separately.

The Appeal

On 20 February 2025, XSYS appealed the decision. Considering the appeal, the UPC Court of Appeal confirmed:

The competence of the UPC as to the subject-matter is set out in Art. 32 UPCA. The competence of the Court shall apply to any European patent that had not lapsed at the time the UPCA entered into force.

The UPCA does not impose any temporal limitation on the UPC’s competence regarding alleged acts of infringement, regardless of whether they occurred before or after 1 June 2023.

The determination of the competence of the UPC does not require that applicable law be addressed. Jurisdiction and applicable law are separate aspects that must be assessed separately from each other.

The UPC’s competence as of the date the action was filed (27 August 2024) includes acts that occurred before the UPCA came into force. This does not violate the principle of non-retroactivity of international treaties. At the time of deciding on the competence of the UPC, the Court applied the relevant applicable provisions on the competence of the UPC, namely Art. 32 UPCA, applicable at that date, which does not raise a question of retroactivity.

Once a patent proprietor withdraws an opt-out, the patent falls fully under the UPC’s exclusive jurisdiction. The UPCA does not allow for partial or limited withdrawals.

The UPC is competent to decide on alleged acts of infringement which occurred during the time period between the effective date of the opt-out (which, in the event of an opt-out filed before 1st June 2023, is the date of entry into force of the UPCA) and that of the withdrawal.

Key Takeaways

The UPC Court of Appeal has confirmed that the UPC is competent to decide on alleged infringing acts which have occurred before the date of entry into force of the UPCA (i.e., before 1 June 2023).

The UPC Court of Appeal has also confirmed that the UPC is competent to decide on alleged infringing acts which have occurred between the effective date of the opt-out and the opt-out withdrawal.

The decision has significant consequences for both proprietor’s and potential infringers.

From a proprietor’s perspective, the UPC may now be a more attractive forum, even for historic infringements. The ability to bring past acts within the UPC’s jurisdiction by withdrawing an opt-out enhances the strategic value of this procedural tool.

From an alleged infringer’s perspective, this ruling seems to remove any assumption that past acts are immune from UPC litigation. Infringers may now face actions for conduct that predates the UPCA or occurred during an opt-out period. It will be important for businesses to closely track the opt-out and opt-out withdrawal status of relevant patents, as a change in status could expose them to UPC proceedings for past conduct.

See full decision here. 

For further information on the UPC or to discuss how this decision may impact your business, please contact a Secerna attorney.