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The UPC Court of Appeal (CoA) ruled on 16 January 2025, that the UPC has jurisdiction on a separate action for damages. It came after a contracting member state’s (CMS) court decided that a European patent (EP) was infringed, and that the infringer had an obligation to compensate for damages arising from the infringement.
It follows a decision of 9 August 2022, made by a German court, which had decided that the German element of an EP was infringed and the infringer had to compensate the patentee – but the court did not assess the damages. The decision had not been appealed and thus was final.
But the patentee filed an action for determination of damages before the Hamburg Local Division (LD). On the filing of a preliminary objection for lack of jurisdiction of the UPC to assess damages of the German part of EP, the LD declined its jurisdiction. The CoA quashed the decision.
Key takeaways:
- The CoA issues a timely reminder that UPC jurisdiction derives from Article 32 UPCA. According to the CoA, the UPC has clear jurisdiction according to Article 32(1) a), over infringement of EP and f), over actions for damages derived from the provisional protection granted to published EP applications.
- Article 32(1) f) UPCA does not provide that the infringement must be established by the UPC, there is no underlying logic in treating EP applications and granted EPs differently with respect to the award of damages.
- Regarding the separate nature of the action for damages, the CoA considers that it could be a proper distinct action, typically in a case where infringement is recognised by the parties, and they seek only the determination of damages pursuant to RoP 118.1. Consequently, in the presence of a decision by a national court recognising infringement, there can be no difference in treatment.
- Although the jurisdiction of the UPC for a separate action for damages, when a national court has issued an infringement decision is not explicitly stated in the UPCA, it can be inferred according to the CoA.
About the author(s)
Mathilde is an intellectual property senior associate, who focuses her practice in multiple areas, including patents, trademarks, designs, trade secrets, copyright, both in litigation and non-litigation matters.
Marianne is an Intellectual Property lawyer in Paris. She is a recognised trial lawyer in national pan-European and international patent, trademark, and trade secrets disputes in the electronics and telecommunications, pharmaceutical, chemistry, and consumer products sectors.
