XSYS Italia v Esko-Graphics Imaging (CoA, 2 June 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

The Court of Appeal dismissed XSYS’s appeal and confirmed that the UPC has competence over alleged infringing acts committed before the Agreement entered into force on 1 June 2023 and during the period in which the patent was opted out before the opt-out was withdrawn. Competence is assessed at the date the action is filed, without temporal limit. The separate question of the law applicable to earlier acts is left to the merits. For holders of European patents predating the UPC, the ruling opens the court to the whole infringement history, including after an opt-out is withdrawn.

Facts and procedure

Esko-Graphics Imaging owns EP 3 742 231, whose grant was published on 30 June 2021. The patent was opted out on 12 May 2023, and the opt-out was withdrawn on 26 August 2024 under Art. 83(4) UPCA and Rule 5.7 (paragraph 1). On 27 August 2024 Esko sued the XSYS companies before the Munich Local Division for acts alleged both before and after 1 June 2023 and before and after the withdrawal (paragraph 2).

XSYS lodged a preliminary objection under Rule 19.1(a), disputing competence for the period before the Agreement entered into force and for the period up to the withdrawal of the opt-out (paragraph 3). By order of 10 February 2025 the Local Division rejected it and granted leave to appeal (paragraphs 5 to 8). On appeal XSYS sought dismissal of the action for the disputed periods or, in the alternative, a stay and a reference to the Court of Justice (paragraph 10).

The applicable law

Art. 32(1) UPCA confers exclusive competence on the Court for infringement actions. During the transitional period, Art. 83 preserves the competence of national courts (paragraph 1), allows opt-outs (paragraph 3) and their withdrawal at any time (paragraph 4). Art. 71c(2) of Regulation 1215/2012 applies the lis pendens rules during that period. XSYS relied on the principle of non-retroactivity of treaties in Art. 28 of the Vienna Convention (paragraph 11).

Question

Does the UPC have competence over infringing acts before 1 June 2023 and over the period covered by an opt-out that was later withdrawn?

Decision

The objection is admissible: a lack of competence limited to certain periods may be raised under Rule 19.1(a) (paragraphs 13 to 16). On the merits, Art. 32(1), construed under customary international law as reflected in Art. 31 of the Vienna Convention, contains no temporal limit (paragraphs 23 and 24). That reflects the Agreement’s object of avoiding a fragmented European patent market, and Art. 3 does not address earlier acts (paragraphs 25 to 27).

During the transitional period, the UPC’s exclusive competence coexists with that of national courts. The patentee’s choice is merely a choice of forum and creates no partial or time-limited competence (paragraphs 28 to 31), as Art. 71c(2) of Regulation 1215/2012 confirms (paragraph 32). Competence and applicable law are separate. Whether substantive law and Art. 56 measures apply to earlier acts will be decided later (paragraphs 33 and 34).

Assessing competence at the filing date does not offend the principle of non-retroactivity, and the Agreement in any event provides for that competence. No reference or stay is needed (paragraphs 35 to 39). Lastly, withdrawal of an opt-out brings the patent fully back within the UPC’s exclusive competence, with no partial withdrawal: the Court therefore hears acts committed during the opt-out, whose effective date, for opt-outs lodged before 1 June 2023, is the Agreement’s entry into force (paragraphs 40 to 43). Costs are left to the Local Division (paragraph 44).

Key points for practice

• The UPC’s infringement competence has no temporal limit: acts before 1 June 2023 may be pursued before it (paragraphs 24 and 35).
• Withdrawal of an opt-out has full effect. A defendant cannot confine the UPC’s competence to acts after the withdrawal (paragraphs 41 to 43).
• The law applicable to pre-Agreement acts and the power to order Art. 56 measures remain open for the merits (paragraph 34).
• Practical point: a preliminary objection is no longer a useful way to carve out earlier periods, the debate moves to the substantive law applicable to each period.

Provisions applied

Agreement on a Unified Patent Court

Arts 3, 32(1)(a) and 83(1), (3) and (4)

Rules of Procedure

Rules 5.7, 19.1(a) and 266

Regulation (EU) No 1215/2012

Art. 71c(2)

Vienna Convention on the Law of Treaties

Arts 28 and 31

Case law cited

Fives v Reel, Court of Appeal, 16 January 2025, CJEU, Bosphorus Queen Shipping, C-15/17

Related decisions

• XSYS Prepress v Esko-Graphics Imaging, 10 February 2025, Munich Local Division order rejecting the preliminary objection.

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.