Can a Local Division of the UPC determine the amount of damages resulting from infringement established by a national court decision?

It seems the Local Division of the UPC in Hamburg thought differently than the UPC Court of Appeal.

So, long story short, here’s the situation: a valid European Patent; a decision by the Düsseldorf Regional Court confirming the infringement act and ruling that damages should be quantified; a decision by the UPC Local Division in Hamburg stating that they lack the jurisdiction to decide on quantification of damages; and a final decision of the UPC Court of Appeal that overturns what was previously stated by the Local Division.

The result: Yes, the jurisdiction of the UPC extends to determining damages even when the initial infringement ruling comes from a national court.

And, yes, The UPC’s jurisdiction extends to acts of infringement committed before June 1, 2023, as long as the patent was still in force on that date.

Now, more details for interested readers:

UPC Court of Appeal Clarifies Jurisdiction in Damages Claims

The Unified Patent Court (UPC) Court of Appeal has recently addressed a crucial point regarding its jurisdiction in a case concerning damages for patent infringement already established in national courts.

In a decision issued on January 16, 2025 (UPC_CoA_30/2024, APL_4000/2024), the Court of Appeal overturned a previous ruling by the Local Division in Hamburg, asserting its competence to determine the amount of damages resulting from infringement established by a national court decision.

The case involved a French company, Fives ECL, SAS, that had previously won a patent infringement case against a German company, REEL GmbH, in the Düsseldorf Regional Court before the UPC system was active. The German court ruled in 2022 that REEL had infringed Fives' European patent (German part of EP 1 740 740 B1) and was liable for damages. The judgment of the Düsseldorf Regional Court was not appealed. Fives then sought to quantify these damages through the UPC, but following a Preliminary objection by REEL, the Local Division Hamburg rejected the claim for determination of damages, arguing it lacked jurisdiction (17 November 2023, UPC_CFI_274/2023; ACT_559935/2023).

According to the Local Division, Art. 32(1)(a) UPCA confers jurisdiction on the UPC to determine damages only after a prior action for patent infringement has been brought before the UPC.

After an in-depth analysis of the genesis of Art. 32(1)(a) UPCA and the relative wording, the Court of Appeal's decision clarified that the UPC's jurisdiction extends to determining damages even when the initial infringement ruling comes from a national court. They emphasized that excluding UPC jurisdiction in such cases would create an inconsistency, especially considering the UPC's authority to rule on damages even before a patent is granted.

At paragraphs 55 and 56 of the Court of Appeal’s decision a reference is made to the Brussels la Regulation Art. 71a, where the UPC is defined as a court common to several Member States: thus, the UPC is considered a court of a Member State and as far as national courts recognise their own judgments, there is no need for the Regulation to provide for recognition by the UPC of judgements of courts of a Contracting Member State.

This decision aligns with the objectives of the UPCA and EU Regulation 1215/2012, ensuring recognition of national court decisions within the UPC framework. The Court of Appeal also confirmed its jurisdiction extends to acts of infringement committed before June 1, 2023, as long as the patent was still in force on that date.

The Court of Appeal has addressed another interesting question: forum shopping and “law shopping”. Shifting between national law and Art. 68 UPCA has been recognized as capable of providing different outcomes, which is deemed acceptable especially as a result of the transitional regime, when actions may still be brought before national courts during the transitional period: “Even in the event of a difference between the applicable law applied by the national courts and the UPC, this is envisaged and falls within the purpose and object of the UPCA”.? So, this means that there can be variation between national law of Member States, especially on some aspects like statutory limitation periods or calculation of damages, notwithstanding the fact that “the EU legislation has chosen to provide for minimum harmonization concerning the enforcement of intellectual property rights in general”.

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