Jurisdiction for independent actions for the determination of damages before the UPC (UPC_CoA_30/2024; APL_4000/2024)

Introduction

By order of 16 January 2025 (UPC_CoA_30/2024; APL_4000/2024), the Court of Appeal of the Unified Patent Court (UPC) dealt with the question of the UPC's jurisdiction to determine the amount of damages for infringements of European patents, even if the underlying infringement was not previously determined by the UPC itself but by a court of a Contracting Member State. The Court of Appeal confirmed the UPC's jurisdiction in these cases and clarified that this also covers acts of infringement committed before the UPCA entered into force on 1 June 2023, as long as the asserted European patent has not yet expired at that time.

Background

In the underlying case, the patent owner had brought an action before the Regional Court in Dusseldorf (Landgericht Düsseldorf) before the entry into force of the Agreement on a Unified Patent Court (UPCA) to establish an obligation to pay damages for infringement of the German part of a European patent (EP). The action was successful and the judgement became final.

The plaintiff then applied to the Unified Patent Court (UPC), namely the Local Division Hamburg, for the specific determination of damages under Art. 32(1)(f) UPCA, Art. 68(1) UPCA and Part 1 Chapter 4 Rules of Procedure (RoP). The defendant then lodged an objection pursuant to R. 19.1(a) RoP and asserted that the court seized did not have jurisdiction for the present application for the determination of damages pursuant to Art. 32(1) UPCA because the underlying infringement proceedings were not conducted before the UPC but before a national court.

The Local Division Hamburg followed the view of the defendant and upheld the objection. It held that Art. 32(1)(a) UPCA conferred jurisdiction on the UPC to determine the amount of damages only if an action for patent infringement had previously been brought before the UPC. Similarly, according to the Local Division Hamburg, Art. 32(1)(f) UPCA only establishes jurisdiction for actions for damages or compensation based on the (provisional) protection conferred by a published application for a European Patent. The recognition of a national judgement awarding damages, on the other hand, could not establish the UPC's jurisdiction to determine damages.

The plaintiff appealed against this decision and requested that it be reversed.

Decision

The plaintiff was successful with her appeal and the case was referred back to the Local Division Hamburg for a new hearing.

The Court of Appeal did not follow the reasoning of the Local Division. Instead it held that the UPC also has jurisdiction for independent actions for the determination of damages after a court of a Contracting Member State has determined the infringement of a European Patent and the obligation in principle of the infringer to pay damages.

The wording of Art. 32(1)(a) UPCA neither excludes that independent actions for damages (as in the present case) are covered by the jurisdiction of the UPC, nor does it expressly prescribe such jurisdiction. However, an interpretation of the Rules of Procedure and the origin of the UPCA leads to the conclusion that there may be cases in which the existence of a patent infringement does not have to be legally and factually assessed by the Court. There is no reason to treat the present case differently. Although the Rules of Procedure treat the determination of damages as a subsidiary request, this must be disregarded, as it follows from a combined reading of Articles 32(1)(a), 32(1)(f) and 34 UPCA that the request for determination can also be filed as an independent action.

The jurisdiction of the UPC also extends to acts of infringement committed before the UPCA entered into force on 1 June 2023, as long as the asserted European patent has not yet expired at that time.

Practical note

The decision of the Court of Appeal makes it possible to file an action to determine the amount of damages before the UPC after the patent infringement has been established by a national court. This can be strategically important if the assessment of damages under the UPCA and the RoP is more favourable to the patentee than the assessment of damages under national law. The Court of Appeal clearly rejected the allegations of "forum shopping" and "law shopping" in this regard. It argued, that a divergence between the law applied by the national courts and the UPCA is provided for and even corresponds to the meaning and purpose of the UPCA. It can therefore be assumed that the number of actions brought before the UPC will increase significantly in the future as a result of this ruling and that the UPC will become even more important. However, it remains to be seen whether the case law on the assessment of damages before the UPC will develop considerably differently in the long term than before the national courts. There have not yet been many damage assessment proceedings before the UPC.