UPC_CoA_156/2025 – Order of 2 June 2025 (appeal from UPC_CFI_483/2024, Munich LD)
The court of appeal (Grabinski / Blok / Gougé) has dismissed XSYS’s challenge to the Munich Local Division’s order in Esko-Graphics v XSYS. XSYS had argued that the Unified Patent Court lacks competence for alleged infringements of EP 3 742 231 that occurred (i) before the UPCA entered into force on 1 June 2023 and (ii) during the period in which the patent was opted out of UPC jurisdiction. The Court of Appeal rejected both propositions.
Esko filed its infringement action on 27 August 2024, one day after withdrawing a previously lodged opt-out. XSYS raised a Rule 19 preliminary objection, contending that Article 32 (1)(a) UPCA does not reach back to pre-UPCA conduct and that the opt-out withdrawal cannot retroactively confer competence on the UPC. The Munich Local Division disagreed and granted leave to appeal; the Court of Appeal has now affirmed.
The CoA read Article 32 UPCA in light of customary international-law principles (Vienna Convention, Articles 31 and 28). They found no temporal qualifier in the treaty text and stressed the UPCA’s core purpose: to replace fragmented national litigation with a common court. Article 3 UPCA, which lists the rights to which the Agreement applies, says nothing about limiting competence to post-2023 events; during the transitional period Article 83 merely offers plaintiffs a forum choice, not a time-slice of competence. Determining jurisdiction on the filing date therefore raises no retroactivity problem, and even if it did, the contracting states clearly intended the UPC to hear legacy disputes.
Once the proprietor withdraws an opt-out, the patent re-enters the UPC system in full. The Court rejected the notion that acts occurring while the opt-out was in force remain outside UPC reach; such a carve-out would undercut the uniform-court objective.
The question of whether the substantive law of Art. 25 et seq. UPCA and the measures, procedures and remedies as laid down under Art. 56 UPCA are applicable in relation to acts having occurred before the entry into force of the UPCA is not (yet) decided by the Court of Appeal.
