Background

Esko-Graphics Imaging GmbH (Esko) is the proprietor of European patent 3742231 which granted on 30 June 2021. On 12 May 2023, the patent was opted-out of the jurisdiction of the UPC. On 26 August 2024, Esko withdrew the opt-out.

Court of first instance, Munich Local Division

Esko brought an action for infringement of the patent against XSYS the day after the opt-out withdrawal at the Munich Local Division in relation to acts which were alleged to have taken place:

• Before and after the entry into force of the UPCA on 01 June 2023; and
• Before and after the withdrawal of the opt-out of the patent in dispute.

XSYS responded with a preliminary objection raising that the UPC has no competence to decide on infringement acts:

• Before entry into force of the UPCA; and
• Between the date of entry into force of the agreement and the date of withdrawal of the opt-out.
• The court rejected the preliminary objection and granted leave to appeal, finding that:
• The UPC has jurisdiction over the action without temporal limitation;
• Esko could decide to bring the action for infringement before the UPC since, following the withdrawal of the opt-out, there was again a concurrent jurisdiction between the national court and the UPC; and
• The UPC has competence over the entire period asserted in the action, and that said competence is without prejudice to the determination of the applicable law to acts that have taken place before entry into force of the UPCA or before withdrawal of the opt out.

Court of Appeal, Luxembourg

XSYS brought an appeal against the order by the court of first instance. XSYS raised a variety of arguments in their grounds of appeal. Specifically, it objected that the UPCA does not have retroactive effect pursuant to the general principle of non-retroactivity of treaties and the Vienna Convention on the Law of Treaties. It also referred to the North American Free Trade Agreement (NAFTA), according to which arbitral tribunals have consistently declared themselves to have competence only over events that occurred after the entry into force of the NAFTA. The appellant also made reference to the Protocol of the UPCA and asserted that the UPC lacks competence for the duration of the opt-out until its withdrawal.

Esko responded to this appeal, rebutting the submissions and arguing that the court did have competence for infringing acts committed prior to the entry into force of the UPCA and for the time period between the opt-out and its withdrawal. It argued that the Vienna Convention addresses issues of substantive law and does not extend to procedural rules.

The court found the preliminary objection to be admissible but found it to be unfounded and therefore dismissed it. They found that the wording of Article 32(1) UPCA does not provide for any temporal limitation of the exclusive competence of the court concerning the acts of alleged infringements. Furthermore, it stated that the absence of any temporal limitation reflects the object and purpose of the agreement which is to create a common court in order to prevent the difficulties caused by a fragmented market for patents in Europe and the variations between national court systems. The court also found that after withdrawal of an opt-out, the patent is entirely under the exclusive competence of the UPC without any limitation, and that therefore the court is competent to decide on alleged acts of infringement which have occurred during the time period between the effective date of the opt-out and that of the withdrawal.

Key takeaways

Following this case, the UPC Court of Appeal has made it clear that the UPC’s jurisdiction includes acts of infringement occurring before the UPCA came into effect as long as the allegedly infringed patent is within the UPC’s competence at the time of an action before the UPC. Additionally, the court confirmed that the withdrawal of an opt-out restores competence of the UPC. This avoids fragmentation and aids the creation of a harmonised system which is a goal of the UPCA.

This case provides certainty to patentees looking to enforce a patent using the UPC if they have previously opted out their patent and subsequently withdrawn the opt-out.

Case details at a glance

Decision level: Luxembourt Court of Appeal
Order: ORD_23545/2025
Parties: XSYS Italia Srl, XSYS Prepress NV, XSYS Germany GmbH v Esko-Graphics Imaging GmbH
Date: 02 June 2025
Decision: dycip.com/UPC-ORD-23545-2025