Esko-Graphics Imaging GmbH v XSYS Germany GmbH, XSYS Prepress N.V, XSYS Italia S.r.l.
Order of 10 February 2025 (UPC_CFI_483/2024)[1]
The Defendants filed a preliminary objection arguing that the UPC lacks jurisdiction under Art. 32(1)(a) and (f) UPCA to decide on an infringement occurring prior to the UPCA's entry into force on 1 June 2023.
The Defendants argued that the UPCA does not provide substantive rights to the Claimant but only a limited number of powers for the Court to order measures at the Claimant's request and its discretion; the Court determines whether these powers cover the alleged infringement. Consequently, the UPC's jurisdiction is limited to acts occurring after 1 June 2023, and any claims for acts before this date should be handled by national courts. The Defendants argued that the opt-out and opt-in provisions of the UPCA do not have retroactive effect, further limiting the UPC's jurisdiction to the period after the opt-in became effective. They also highlighted that international law principles, such as those in the Vienna Convention, support the non-retroactive application of treaties.
The Claimant argued that the UPC has jurisdiction over claims with infringing acts occurring before the UPCA's entry into force, because Art. 3(c) UPCA provides comprehensive applicability to all European patents that have not expired. The court's competence is not a matter of retroactivity but whether the UPCA is applicable at the time of the decision, in this case the decision on the preliminary objection. They also argued that the opt-in declared on 26 August 2024 has retroactive effect, restoring the original concurrent jurisdiction of the UPC and national courts. The Claimant opposed the Defendants' preliminary objection and the alternative request for a stay.
Decision
The Court found that its competence extends to acts of use by the Defendants before the UPCA's entry into force on 1 June 2023 and accepted the Claimant's position that the UPC's competence is not a matter of retroactivity but rather the applicability of the UPCA at the time of the decision.
The Court also considered the opt-in provisions of the UPCA, agreeing with the Claimant's argument that the opt-in has retroactive effect, restoring the original concurrent jurisdiction of the UPC and national courts. Therefore, the Claimant has rightfully brought proceedings in the UPC. Although the Defendants argued that international law principles support the non-retroactive application of treaties, the Court found that these principles did not preclude the UPC's jurisdiction over the alleged acts of infringement.