The question of the UPCA having a retroactive jurisdiction to rule on infringing acts occurring before its ratification was previously posed to the Mannheim Local Division of the UPC (UPC_CFI_365/2023), but remained unanswered following dismissal of the action in question. However, in a recent decision by the Munich Local Division (UPC_CFI_342/2024), the judge-rapporteur held that the UPC has jurisdiction to rule on acts of infringement committed both in the period before the UPCA came into force as well as in the period between submission of an opt-out and its subsequent withdrawal.
In the case at hand, the claimant opted-out the patent in suit from the jurisdiction of the UPC before ratification of the UPCA on 1 June 2023, and later proceeded to withdraw their opt-out before filing a statement of claim. A preliminary objection was raised by the defendants with regard to infringing acts alleged to have taken place before the UPCA came into force and before withdrawal of the claimant's opt-out respectively. In particular, the defendants alleged that the UPC lacked jurisdiction to rule on such alleged acts.
Whilst the preliminary objection was found admissible, the Court held that it was unsuccessful on the merits. In the present case, it was said that the UPCA had subject matter jurisdiction owing to inter alia Article 3(c) UPCA, which stipulates that the Agreement applies to any European patent which has not yet lapsed at the date of entry into force of the UPCA, and which is not opted-out. The only relevant point in time for determining the competence of the Court was said to be the time at which the action is filed; hypothetical questions of whether the Court would have had jurisdiction at previous points in time were found to be irrelevant.
The Munich Local Division has also handed down this same reasoning in another recent judgement (UPC_CFI_483/2024). In both instances, the Court was found to have jurisdiction over the entirety of the actions without time limitation. The question of the relevant law to be applied to these disputes, as distinct from the question of jurisdiction, was left for the main proceedings on the merits of the actions.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
