The Court of Appeal (CoA) confirms the UPC’s jurisdiction over infringements committed before 1 June 2023 and during an opt-out period where the European patent is subsequently opted back into the jurisdiction of the UPC.
SUMMARY
On 27 August 2024, ESKO (a printing technology manufacturer) launched an infringement action against competitor XSYS before the Munich Local Division. ESKO filed an opt-out in respect of the relevant European patent in May 2023 but later withdrew it, the day before issuing its infringement claim.
Following service of the infringement claim, XSYS proceeded to lodge a preliminary objection, claiming that (by reference to Article 32(1)(a) of the UPC Agreement) the UPC does not have jurisdiction to determine an infringement claim to the extent it covers acts that occurred:
- before the commencement of the UPC on 1 June 2023; and
- between 1 June 2023 and the date when ESKO withdrew the opt-out.
The Munich Local Division rejected the preliminary objection, which was subsequentially appealed by XSYS.
In siding with the Local Division, the first panel of the CoA ruled that the UPC is competent to hear a claim for infringement taking place over the period in which the opt-out was effective. The CoA also proceeded to extend the competence of the UPC to the period prior to the UPC’s commencement on 1 June 2023. The Court made clear that, to rule otherwise, would go against the overriding objective of the UPC – namely, to harmonise the European patent system. Despite the general principle of non-retroactivity of treaties, the CoA judges further reasoned that Article 3 of the UPC Agreement - which defines the scope of application of the Agreement - does not limit the Court’s competence to acts occurring after 1 June 2023.
The CoA declined to refer these questions to the European Court of Justice.
COMMENTARY
This decision settles any remaining questions as to the scope of the UPC’s jurisdiction for pre-UPC activities and those taking place during the “opt-out” period. The ruling aligns with the CoA decision (issued by the second panel) earlier this year in the case of Fives v REEL, which confirmed the UPC can decide on acts of infringement committed before the entry into force of the UPC Agreement.
This decision will be welcome by parties seeking to obtain relief in respect of infringing activities taking place over a longer period. However, it may equally impact upon pending preliminary injunctions which have been brought on the same basis as relied on by the defendant in this case.
