PHOENIX CONTACT v Industria Lombarda Materiale Elettrico I.L.M.E. (CFI, 10 February 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 10 February 2025 (ORD_68781/2024, UPC_CFI_342/2024), Ulrike Voß, judge rapporteur in the Munich Local Division, rejected the preliminary objection raised by Industria Lombarda Materiale Elettrico I.L.M.E. S.p.A. and ILME GmbH, sued by PHOENIX CONTACT GmbH & Co. KG for infringement of EP 3 602 692. The defendants disputed the UPC’s jurisdiction over acts before 1 June 2023 and over acts committed during the opt-out, registered on 12 May 2023 and withdrawn on 19 June 2024. The order holds that jurisdiction covers the whole period claimed and leaves applicable law to the merits.

Question

Does the UPC have jurisdiction over acts of infringement predating the entry into force of the UPCA or committed while an opt-out, later withdrawn, was in place?

Decision

The objection was admissible, even though limited to certain periods (paragraphs 28 to 30). The UPC has jurisdiction under Art. 32(1)(a) UPCA, during the transitional period that jurisdiction runs alongside that of national courts, an opt-out excludes it and its withdrawal restores it (paragraphs 31 to 34), as was the case when the claim was filed on 24 June 2024 (paragraph 35). Jurisdiction is assessed at that time and raises no issue of retroactivity (paragraphs 36 to 38). Since no national action had been brought during the opt-out, the exclusive national jurisdiction during that period was irrelevant (paragraph 40). Whether the substantive rules apply to earlier acts is a separate question for the merits (paragraphs 41 to 47). A reference to the CJEU was refused (paragraph 48) and leave to appeal granted (paragraph 50).

Key points for practice

• UPC jurisdiction covers acts before 1 June 2023 and acts during a withdrawn opt-out, applicable law being argued on the merits.
• Where no national action was brought during the opt-out, the argument based on exclusive national jurisdiction for that period has no effect.

Provisions applied

Agreement on a Unified Patent Court

Arts 2(g), 3(c), 31, 32(1)(a) and (f), 83 and 89(1)

Rules of Procedure

Rules 19.1, 19.7, 20.1, 21.1, 220.2 and 266.5

Regulation (EU) No 1215/2012

Arts 29 and 71c(2)

Case law cited

Aylo v Dish, Court of Appeal, 3 September 2024

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.