On 4 December 2025, the Court of Venice issued a significant ruling regarding the competence of national courts and the Unified Patent Court (UPC) in proceedings related to European patents that have not been opted out under Article 83 of the Agreement on a Unified Patent Court (UPCA). The Court stated that the UPC has exclusive competence over such patents, even during the transitional period. This ruling represents the first time that an Italian court has addressed this issue, carrying significant practical implications.
The case law of the UPC Court of Appeal on the competence between national courts and the UPC related to European patents that have not been opted out
Until this ruling, Article 83 of the UPCA – which governs the seven-year transitional period following the UPCA’s entry into force – had generally been interpreted as allowing plaintiffs to choose between the national court and the UPC in infringement or invalidity proceedings concerning non-unitary European patents for which the opt-out had not been filed. This interpretation is based on the first paragraph of Article 83, which provides that during the transitional period it is still possible to bring invalidity or infringement proceedings before national courts or other competent national authorities.
The issue has also been discussed before the UPC in the case XSYS Germany GmbH et al. (“XSYS”) v. Esko-Graphics Imaging GmbH (“ESKO”) (UPC_CFI_483/2024), in which the UPC Court of Appeal ruled in favour of concurrent competence between the UPC and national courts for European patents that have not been opted out. The case concerned an action for infringement of ESKO’s patent by XSYS brought before the Munich Local Division and related to infringements that had taken place both before and after the entry into force of the UPCA, as well as both before and after the withdrawal of the opt-out of the patent in question. In those proceedings too, the defendant raised a claim of lack of competence, arguing that the UPC could not rule on infringements carried out before the UPCA entered into force, nor on those carried out after it entered into force but before the withdrawal of the opt-out. The UPC Court of Appeal upheld the court of first instance’s decision, affirming the principle that during the transitional period governed by Article 83, where the patent has not been opted out, the exclusive competence of the UPC is limited by a parallel competence of national courts of the Contracting Member States, as well as by the possibility for patent holders, under certain conditions, to opt-out their patent(s) from the exclusive competence of the UPC and to withdraw said opt-out at any moment (UPC_CoA_156/2025, Order of 2 June 2025).
The decision of the Court of Venice
In the proceedings before the Court of Venice, the plaintiff brought an action for infringement of its non-unitary, non-opted out European patent 1605113 (EP’113), as well as the Italian patent IT 1350609. Although the defendant had not raised any claim in this regard, the Court of Venice raised the issue of lack of competence.
While the defendant did not take a position on this point, the plaintiff argued that, as upheld by the UPC case law referred to above, the exclusive competence of the UPC for non-unitary, non-opted out European patents would only come into effect at the end of the transitional period.
The Venice Court rejected the plaintiff’s argument and declined competence. It first pointed out that for disputes related to non-unitary European patents, the general rule for determining competence is governed by Article 32 of the UPCA, which states that the UPC has exclusive competence. The possibility of bringing proceedings before national courts during the transitional period would, however, be subject to Article 83(3) of the UPCA, according to which holders or applicants of European patents would only be able to exclude the UPC exclusive competence by exercising the opt-out.
According to the Court of Venice, a combined reading of the two provisions referred to above suggests that, unless the holder expressly waives this right, cases relating to non-unitary European patents fall within the exclusive competence of the UPC. The relevant wording is the phrase “shall have the possibility to opt out from the exclusive competence of the Court”. This clause presupposes that the opt-out applies in relation to a competence of the UPC that is exclusive, and not concurrent with the jurisdiction of national courts.
Furthermore, according to the Court, if the argument put forward by the plaintiff was accepted – namely that, during the transitional period, the patent holder may choose whether to bring proceedings before the UPC or a national court – this would give rise to uncertainty and inconsistencies. The system as outlined in Article 83(3), on the other hand, makes it possible to establish unequivocally that, in principle, during the transitional period, the UPC has always competence to decide, unless the holder of the patent in question has exercised the opt-out, which can be ascertained by consulting the UPC register.
The judgment of the Court of Venice in question was subsequently appealed by the plaintiff and, therefore, we must wait and see which approach the Venice Court of Appeal will adopt.
