The UPC Court of Appeal has confirmed that the UPC has jurisdiction to hear standalone damages proceedings, even when the infringement ruling was made by a National Court before the UPC Agreement entered into force and before the UPC began operations, provided that the patent remained in force on 1 June 2023 and was not opted out of the UPC system. In doing so, the Court of Appeal overturned the Hamburg Local Division's ruling, which had found that the UPC's jurisdiction does not extend to standalone damages claims arising from National Court judgments.
The decision in UPC_CoA_30/2024 (16 January 2025), involving Fives ECL, SAS (Fives) and REEL GmbH (REEL), clarifies that Article 32(1)(a) UPCA grants the UPC jurisdiction over damages claims following national infringement rulings. The Court specifically held that the phrase "actions for actual or threatened infringements" includes standalone damages actions, since damages form an integral part of patent enforcement.
Beyond jurisdiction, the Court also addressed concerns about forum shopping, where patentees might strategically litigate infringement in national courts while pursuing damages in the UPC. REEL had argued that allowing such claims would create procedural imbalances. However, the Court rejected these concerns about "law shopping". The ruling noted:
"The possibility of different outcomes is however accepted already as a result of the transitional regime. 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."
The Court also pointed out that Article 68 UPCA, which governs the award of damages, is designed to align with EU law, specifically Article 13 of the Enforcement Directive (Directive 2004/48/EC), which sets minimum standards for IP enforcement but allows for some national variations. As the ruling explains:
"This means there can be variations between Member States, for example on statutory limitation periods or on the calculation of damages."
Since the UPC qualifies as a 'court of a Member State' under Article 71a of the Brussels Ia Regulation, the Court concluded that the UPCA accounts for differences in applicable law between national courts and the UPC, and that such differences do not undermine UPC's purpose. It reaffirmed that allowing the UPC to determine damages in these circumstances aligns with the structure of the transitional period and the objectives of the UPCA.
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