XSYS Prepress v Esko-Graphics Imaging (CFI, 10 February 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 10 February 2025 (ORD_6847/2025, UPC_CFI_483/2024), Ulrike Voß, judge rapporteur in the Munich Local Division, rejected the preliminary objection raised by XSYS Germany GmbH, XSYS Prepress N.V. and XSYS Italia S.r.l., sued by Esko-Graphics Imaging GmbH for infringement of EP 3 742 231. The defendants disputed the UPC’s jurisdiction over acts before 1 June 2023 and over acts committed during the opt-out, withdrawn on 26 August 2024. The order holds that jurisdiction covers the whole period of the action 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jurisdiction over acts of infringement predating the entry into force of the UPCA or committed while an opt-out, later withdrawn, was in place?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 directed at part of the claim only (paragraphs 25 to 27). The UPC has jurisdiction over a patent in force on 1 June 2023, during the transitional period its jurisdiction runs alongside that of national courts unless the patent is opted out, and withdrawal of the opt-out restores it, the relevant time being the filing of the claim (paragraphs 28 to 33). That jurisdiction extends to the whole period covered by the action, with no retroactive removal of national jurisdiction, proceedings already pending nationally being governed by the rules on parallel proceedings (paragraphs 34 to 37). Jurisdiction and applicable law are separate questions (paragraphs 39 to 43): the legal consequences of the earlier acts are a matter for the merits (paragraph 44). A stay and a reference to the CJEU were refused (paragraph 45), and leave to appeal was granted (paragraph 47).

Key points for practice

• UPC jurisdiction covers acts before 1 June 2023 and acts during a withdrawn opt-out, the law applicable to those acts being argued on the merits.
• A preliminary objection may target part of the claim only, but cannot be used to decide applicable law.

Provisions applied

Agreement on a Unified Patent Court

Arts 2(g), 3(c), 32, 56 et seq. and 83

Rules of Procedure

Rules 5.5, 19, 20.1, 21.1 and 220.2

Regulation (EU) No 1215/2012

Arts 29 to 32 and 71c

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.