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No time restriction on competence of the UPC
A recent decision of the Court of Appeal of the UPC has held that the competence of the UPC extends to acts of infringement committed before the entry into force of the UPCA.
Background and summary
The present appeal related to a dispute between ESKO-Graphics and XSYS. The European patent in question, EP 3 742 231 B1, was opted-out from the UPC and the opt-out was subsequently withdrawn. The question at issue was whether the UPC still has jurisdiction over any alleged infringement action that occurred in the time period prior to the effective date of the withdrawal.
In summary, the Court held that there was no time restriction on the competence of the UPC. In particular, the Court concluded that the UPC is competent to decide on alleged acts of infringement both before the entry into force of the UPCA and in the time period between the effective date of an opt-out and that of a withdrawal.
First, the Court considered that there was no provision in the UPCA for a time restriction on the competence of the UPC. Whilst acknowledging that the patent holder has a choice between initiating proceedings before the UPC or a national court during the transitional period, the Court held that this choice is limited to the choice of forum and does not provide reduced competence of the elected court, either in relation to the subject-matter or the time period over which the court is competent. Accordingly, the UPC is competent to decide on alleged acts of infringement before the entry into force of the UPCA. Moreover, the parallel competence of the national courts does not limit the exclusive competence of the UPC during the transitional period.
The Court then turned to consider the competence of the UPC when an opt-out is effectively withdrawn. The Court emphasised that when deciding to withdraw an opt-out, the patent holder is choosing to bring the patent under the exclusive jurisdiction of the UPC. In other words, if the opt-out is no longer in force, the patent is considered to have always been under the exclusive competence of the UPC, without any limitation. Accordingly, the UPC is competent to decide on any alleged acts of infringement that have occurred between the effective date of the opt-out and the withdrawal.
Key takeaways
This case highlights that there is no time restriction on the competence of the UPC. Therefore, if an opt-out is withdrawn, the UPC can decide on any alleged acts of infringement irrespective of whether the acts were committed during the time period when the patent was opted-out.
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