Venice Court Questions Parallel Jurisdiction Regime During UPC Transitional Period

It is generally understood that, during the UPC transitional period, where a patent has not been opted out of the jurisdiction of the UPC and no proceedings are pending, actions may be brought either before the UPC or before the relevant national courts. However, a recent decision of the Court of Venice has called that understanding into question: in the view of the Court of Venice, where no opt-out has been filed, actions must be brought before the UPC.

Statutory background

Article 32 UPCA read with Article 1 UPCA establishes that the UPC has “exclusive jurisdiction” over actions relating to European patents, including infringement actions, revocation actions, etc. However, Article 83 UPCA provides for an extendable seven-year transitional period. During the transitional period, actions in respect of “traditional” (i.e. non-unitary) European patents may still be brought before the national courts, and traditional European patents can be opted out of the jurisdiction of the UPC. The relevant paragraphs of Article 83 UPCA are reproduced below.

(1) During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.

(3) Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.

The prevailing understanding of the transitional period

It is generally understood that Article 83 UPCA establishes two jurisdictional positions for the transitional period. First, where a patent has not been opted out of the jurisdiction of the UPC and no proceedings are pending, actions may be brought either before the UPC or before the relevant national courts. Thus, it is not necessary for a European patent to be opted out of the jurisdiction of the UPC for the UPC and the relevant national courts to have parallel jurisdiction over actions concerning the patent. Second, where a patent has been opted out of the jurisdiction of the UPC, actions may be brought only before the relevant national courts.

Considering the transitional period, the UPC Court of Appeal (in AIM v Supponor, UPC_CoA_489/2023 and 500/2023, 12 November 2024 and XSYS v Esko, UPC_CoA_156/2025, 2 June 2025) has stated that the rationale for Article 83 UPCA is that UPC Member States did not want to replace the jurisdiction of the national courts by that of the UPC all at once, but wanted to allow for a gradual transition by introducing parallel jurisdiction of the courts for a transitional period. In XSYS v Esko, the court explicitly stated that

“[d]uring the transitional period set out under Art. 83 UPCA, and unless the patent has been opted out from the exclusive competence of the Court pursuant to Art. 83(3) UPCA, the (exclusive) competence of the UPC coexists with a parallel competence of national courts before which an action for infringement of a European patent may still be brought.”

The decision of the Court of Venice

The case before the Court of Venice (GEOPLAST v DALIFORM, Case No. 10432/2024) concerned, inter alia, infringement of an Italian part of a European patent. Jurisdiction over the matter was not challenged by the defendant, but the court raised the issue of its own motion.

The claimant advanced arguments in line with the prevailing understanding of the transitional period discussed above. However, the Court of Venice did not agree with these arguments. It noted that jurisdiction over infringement actions concerning European patents lies, in principle, with the UPC under Article 32 UPCA. Interpreting Article 83 UPCA, the court held that the possibility of bringing actions before national courts provided by Article 83(1) UPCA is subject to the requirements of Article 83(3) UPCA, i.e. subject to the patent having been opted out of the jurisdiction of the UPC. Thus, the court concluded that actions for European patents must be brought exclusively before the UPC unless an opt-out has been filed.

The Venice court went on to discuss how parallel jurisdiction in accordance with the prevailing understanding of the transitional period would create uncertainty for defendants and third parties, whereas the court’s interpretation results in clarity and predictability: if an opt-out has not been filed, only the UPC has jurisdiction; if an opt-out has been filed, only the relevant national courts have jurisdiction.

As no opt-out had been filed for the patent-in-suit, the court declared that it lacked jurisdiction over the action based on that patent.

Comment

It is important to note that the decision of the Court of Venice is a first instance national decision that sits uneasily with the prevailing interpretation of the transitional regime. There are reports that the decision has been appealed, and in any case it is not clear that other courts will follow the Venice reasoning. It may well be that this case is an outlier only, and going forwards there will be no change from the prevailing interpretation of the transitional regime.

Nevertheless, parties should consider the Venice decision when preparing their litigation strategy. For proprietors wishing to initiate proceedings before a national court, it may be prudent to file an opt-out before commencing the action to reduce the risk of a national court declining jurisdiction on the basis of the Venice reasoning. For parties seeking revocation of, or a declaration of non-infringement in respect of, a non-opted-out European patent, it may be preferable to bring the action before the UPC to avoid the risk of a national court declining jurisdiction.

That said, it seems likely that many parties will conclude that most courts will follow the prevailing interpretation of the transitional regime rather than the Venice reasoning, and so continue to bring actions concerning non-opted-out European patents before national courts during the transitional period.

Finally, when considering opt-out strategy, it should be remembered that Article 83(4) UPCA allows for opt-outs to be withdrawn, provided that an action has not already been brought before a national court.

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