Order UPC_CoA_156/2025 has been issued by the Court of Appeal in the context of an infringement action brought by Esko-Graphics Imaging GmbH against various XSYS entities. The action is in respect of acts alleged to have taken place both before and after the entry into the force of the UPCA on 1 June 2023, which includes a period in which the patent-in-suit was opted-out of the jurisdiction of the UPC.
After withdrawing the opt-out on 26 August 2024, Esko brought the infringement action before the Munich Local Division on 27 August 2024. XSYS then lodged a preliminary objection on the grounds that the UPC is not competent to decide on (i) acts of infringement that occurred before the date of entry of the UPCA (1 June 2023), or (ii) acts of infringement that occurred between the date of the opt-out and the date of the withdrawal of the opt-out. This preliminary objection was rejected by the Munich Local Division, which XSYS subsequently appealed.
In the Order, the Court of Appeal upheld the rejection of the preliminary objection by the Munich local Division, confirming that the UPC is competent to decide on both: (i) acts of infringement that occurred before the date on which the UPCA entered into force (1 June 2023), and (ii) acts of infringement that occurred between the date of an opt-out and the date of the withdrawal of the opt-out. Confirmation of point (i) follows an earlier order of the Court of Appeal (UPC_CoA_30/2024), which we reported on here.
The Order also affirmed the finding of the Munich Local Division that jurisdiction and applicable law are separate issues. Consequently, the Court of Appeal did not address the law to be applied for the allegedly-infringing acts occurring before the entry into force of the UPCA in the present case.
When considering the applicable law issue in other cases (UPC_CFI_159/2024, UPC_CFI_162/2024), the Mannheim Local Division came to the following conclusion.
"[W]ith regard to the determination whether substantive law as laid down in the UPCA or substantive national laws of the UPCA member states applies to acts allegedly infringing traditional European bundle patents, the following applies:
a) to acts committed after the entry into force of the UPCA, the substantive law as laid down in the UPCA applies:
b) to acts committed before the entry into force of the UPCA, the substantive national laws apply;
c) to ongoing acts started before the entry into force of the UPCA and continued after the entry into force on 1 June 2023, the substantive law as laid down in the UPCA applies."
So, Order UPC_CoA_156/2025 provides confidence to claimants who are considering enforcing their patents at the UPC in cases where remedies relating to pre-UPCA infringing acts are of importance. While substantive national law may apply if those infringing acts did not continue after the UPCA entered into force, it seems unlikely that differences between UPC law and national law will be determinative in the majority of cases.
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