The dispute opposed Esko Graphics Imaging GmbH, holder of European Patent EP 3 742 231, and XSYS, which was sued for acts of infringement committed both before and after 1 June 2023 (the date on which the Unified Patent Court Agreement (UPCA) entered into force), as well as during the period in which the patent had been temporarily opted out of the UPC’s jurisdiction.

Before the Munich local division, XSYS raised a plea of lack of jurisdiction under Rule 19.1(a) of the Rules of Procedure, arguing that under Article 32(1) and (f) UPCA, the UPC could not adjudicate acts of infringement that occurred before 1 June 2023 or during the opt-out period, invoking in particular the principle of non-retroactivity of treaties (Article 28 of the Vienna Convention on the Law of Treaties).

The Court of Appeal dismissed this objection and confirmed the UPC’s jurisdiction, as had the Munich local division at first instance, including over acts that occurred prior to the entry into force of the UPCA, provided that the action was brought after that date.

The Court’s key findings are as follows :

• - On the autonomous interpretation of the UPCA : neither Article 32(1) nor Article 3 UPCA imposes a temporal limitation on the UPC’s exclusive jurisdiction. These provisions must be interpreted in light of the UPCA’s objective : to establish a unified, coherent, and exclusive jurisdictional system for European patents.
• - On the transitional regime under Article 83 UPCA : the UPC’s exclusive jurisdiction coexists with the concurrent jurisdiction of national courts. Patent holders may opt their patents out of UPC jurisdiction under certain conditions, and such opt-outs can be withdrawn at any time. Concurrent jurisdiction also applies to acts of infringement committed before the UPCA’s entry into force, as long as the action is brought during the transitional period and the patent has not been validly opted out.
• - On the distinction between jurisdiction and applicable law : the UPC’s jurisdiction must be assessed independently from the substantive law applicable to the case, which is a separate matter and does not affect the admissibility of the action at the jurisdictional stage.
• - On the non-retroactivity of treaties : the UPC’s jurisdiction over pre-UPCA infringement acts does not breach the principle of non-retroactivity of treaties, as codified in customary international law and Article 28 of the 1969 Vienna Convention, so long as the action is brought after the Agreement has entered into force.
• - On the withdrawal of opt-outs : a withdrawal of an opt-out, under Article 83(4) UPCA, fully restores the patent to the UPC’s exclusive jurisdiction as of the date of the withdrawal’s registration. There is no partial withdrawal possible, although national courts may still have concurrent jurisdiction during the transitional period.

Finally, the Court declined to refer the matter to the Court of Justice of the European Union for a preliminary ruling, holding that even a strict interpretation of customary international law (and Articles 28 and 31 of the Vienna Convention) did not preclude the Court’s reasoning.

More information available at www.upc-casalonga.eu.