In appeal decision APL_8790/2025, dated June 2, 2025, the Court of Appeal of the UPC confirmed the temporal competence of the UPC for acts which occurred before the entry into force of the UPC Agreement and during the opt-out period when the opt-out was withdrawn prior to filing the action before the UPC.
This appeal opposes XSYS Italia S.r.l., XSYS Prepress N.V. and XSYS Germany GmbH (Appellants) to Esko‑Graphics Imaging GmbH.
The impugned decision is the order of the court of First Instance of the Unified Patent Court, Munich Local Division, dated February 10, 2025.
- ESKO is the proprietor of European patent 3 742 231 relating to a method of curing photo-curable printing plates.
The patent at issue was initially opted-out from the competence of the UPC jurisdiction under the transitional provisions of the UPC Agreement. However, the opt-out was withdrawn by the Patentee on 26 August 2024, thereby resubmitting the patent to the jurisdiction of the UPC.
On August 27, 2024, Esko filed an infringement action at the Munich Local Division of the UPC, alleging infringing acts by XSYS that occurred:
(a) before June 1, 2023 (pre‑UPC launch),
(b) during the opt‑out period, and
(c) after opt‑out withdrawal.
On October 10, 2024, XSYS raised a preliminary objection under Rule 19.1(a) RoP, challenging UPC competence for acts in periods (a) and (b) above, citing the principle of non‑retroactivity.
- The Munich Local Division rejected the preliminary objection, affirming full temporal competence of the UPC and therefore also for periods (a) and (b) prior to the withdrawal of the Opt-Out and allowed Esko’s infringement action to proceed.
- The Court of Appeal of the UPC affirmed the decision of the First Instance Court and confirmed that the UPC’s competence over infringement acts that occurred in periods (a) and (b) above.
It should be noted, however, that, according to the Court, jurisdiction and applicable law are separated aspects that must be assessed separately from each other. In particular, the Court left undecided which substantive law applies to pre‑UPCA acts.
- This decision aligns with a previous Court of Appeal decision taken by a different panel of the Court of Appeal, in a case opposingFives v Reel (UPC_CoA_30/2024, APL_4000/2024, 16 January 2025), which also confirmed that the UPC had jurisdiction over infringement claims relating to the period before the UPC launch, i.e. prior to June 1st, 2023.
Since both panels of the Court of Appeal have now reached the same conclusion, the question of temporal competence of the UPC can be considered to be settled.