XSYS v Esko-Graphics Imaging (UPC_CoA_156/2025)
Decision date:
02 June 2025
Osborne Clarke summary
- Esko is the proprietor of a patent relating to a method of curing photo-curable printing plates. It previously opted its patent out of the UPC system, but later withdrew that opt-out in August 2024. After the opt-out was withdrawn, Esko commenced infringement proceedings against XSYS before the Munich LD in relation to acts that were alleged to have taken place before and after the entry into force of the UPCA on 1 June 2023, as well as before and after the withdrawal of the opt-out.
- XSYS lodged a preliminary objection concerning the jurisdiction and competence of the court. It maintained that the action should be declared inadmissible as under Article 32(1)(a) & (f) UPCA. The Munich LD dismissed XSYS' preliminary objection and granted leave to appeal. It held that pursuant to Article 32(1)(a), Article 2(g) and Article 3(c) UPCA, the UPC had jurisdiction over the action without temporal limitation.
- On appeal, the Court of Appeal agreed that the preliminary objection was unfounded. It held that the UPC has competence to hear infringement claims from before the court began operations. It also found that the UPC is competent for the opt-out phase if the opt-out has been successfully withdrawn.
- As for acts occurring before the start of the court's operations, the Court of Appeal stated that Article 32(1) UPCA does not provide for a temporal limitation on the exclusive competence of the court concerning acts of alleged infringement. Nor do Articles 1 and 3 UPCA suggest a limitation. The Court of Appeal noted that this reflected the object and purpose of the UPCA, which is to create a common court to prevent the difficulties caused by a fragmented European market for patents.
- The Court of Appeal further stated that the UPC having competence for acts of infringement occurring before the UPCA entered into force does not contradict the principle of non-retroactivity under international law. The court had applied the relevant applicable provision on the court's competence (Article 32 UPCA) and that did not raise the question of retroactivity.
- In relation to the UPC's competence for the opt-out period when an opt-out has been withdrawn, the Court of Appeal held that withdrawal of an opt-out brings the patent back under the competence of the court. The provisions on withdrawal do not provide for partial or limited withdrawals. Again, a different approach would counteract the purpose of the UPCA and lead to a fragmented system.
Issue
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