The Unified Patent Court 2025

MUNICH LOCAL DIVISION Trends and Developments Contributed by: Julia Traumann and Ulrich Blumenröder, Grünecker Patent- und Rechtsanwälte PartG mbB

basis, Presiding Judge at the District Court Düs - seldorf. While the authors do not know the specific reasons that the UPC had for assigning Judge Ulrike Voß and Judge Dr Daniel Voß from Düs - seldorf as judges of the second panel (if any), the Local Division Munich now benefits from legal views from both Düsseldorf and Munich. The dual-panel structure and the growth of per - sonnel allows the Local Division Munich to deal with the ever-increasing workload while main - taining the quality and speed of its judicial pro - cesses. Jurisdiction of the UPC for the Period Prior to the Entry Into Force of the Unified Patent Court Agreement (UPCA) and Substantive Law to Apply – No Decision by the Local Division Munich So Far Two of the most basic questions regarding the UPC are whether and to what extent it has a long-arm jurisdiction, and which substantive law should be applied, in particular to classic Euro - pean bundle patents in different periods of time. It is common ground that the jurisdiction to hear the case must be strictly distinguished from the determination of the substantive law applicable to an alleged infringement. The Local Division Munich has clarified that the UPC is competent in respect of the entire period of time relevant to an action for infringement – ie, also in respect of acts of use prior to the UPCA’s entry into force and prior to the withdrawal of any declared opt-out (Esko-Graphics Imaging v XSYS, UPC_CFI_483/2024, order of 10 February 2025). According to the Local Division Munich, the competence of the UPC is reinstated upon the withdrawal of an opt-out and then extends back in time for an unlimited period. The Local

Division Munich specifically left open the ques - tion of which law will apply to acts that took place before the UPCA’s entry into force or dur - ing any opt-out period. According to the Local Division Munich, the questions of the UPC’s competence and of applicable law are different issues and must be considered separately (in a decision on the merits and not just – as in the decided case – on the objection). Other local divisions, such as the Local Division Mannheim in its decision Hurom v NUC Elec - tronics of 11 March 2025, went further and found that, when determining the applicable substan - tive law, the fundamental principles governing retroactivity – being enshrined and recognised in European law and international law – have to be respected. It stated that, considering these principles with regard to the determination of whether substantive law as laid down in the UPCA or substantive national laws of the UPCA member states apply to acts allegedly infringing traditional European bundle patents: • the substantive law as laid down in the UPCA applies to acts committed after the entry into force of the UPCA; • the substantive national laws apply to acts committed before the entry into force of the UPCA; and • the substantive law as laid down in the UPCA applies to ongoing acts started before the entry into force of the UPCA and continued after the entry into force on 1 June 2023. With regard to ongoing acts, however, to avoid potential hardship, the party concerned may rely on the provisions of the respective national law in force prior to the entry into force of the UPCA with regard to acts of past use – ie, before 1 June 2023. Thus, a defendant may defend itself by pointing to advantageous provisions of the

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