UPC-series: Fives vs. Reel case: Competence of the UPC for damages

The jurisdiction of the UPC is a hot topic on damages, given that for the following 7 years the sunrise -transitional- period to opt-out will be still in force. The matter concerns the Fives vs. Reel case (UPC_CFI_559935/2023) and Article 32 UPCA.

The Applicant requested before the UPC Local Division of Hamburg the determination of the amount of damages against the defendant. It should be noted that Fives has opted-out the patent in dispute from UPC’s jurisdiction. The damages were deriving from an infringement case brought before a national court, the Düsseldorf Regional Court. With reference to Article 32 UPCA, the UPC concluded that this is not covered by the UPCA and as a consequence it rejected the claim.

According to the ruling: “Pursuant to Article 32 (a), the Agreement gives the UPC jurisdiction to determine damages only after a previous action for patent infringement has been brought before a UPC division”. This means that if an infringement action has been brought before a national court, the calculation of damages should be brought before the same court as well. It remains to see if this decision will be overturned in the future.