Fives ECL v REEL (CoA, 16 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 16 January 2025 (UPC_CoA_30/2024), given in German, the second panel of the Court of Appeal set aside the Hamburg Local Division’s order of 17 November 2023, which had declined jurisdiction over Fives ECL’s damages action against REEL, and remitted the case. The UPC has jurisdiction over a stand-alone damages action where a national court has already found infringement and liability to pay damages in principle, including for acts committed before 1 June 2023 if the patent was still in force on that date. For proprietors holding a national infringement judgment, the UPC thus becomes a possible forum for quantum.

Facts and procedure

By judgment of 9 August 2022, not appealed, the Düsseldorf Regional Court found infringement of the German part of EP 1 740 740 and held REEL liable in principle to pay damages. On 8 August 2023 Fives ECL brought an action before the UPC for EUR 6.5 million plus interest in respect of offers relating to the Alba project in Bahrain. On REEL’s preliminary objection (Rule 19.1(a) RoP), the Hamburg Local Division dismissed the action for lack of jurisdiction: Art. 32(1)(a) UPCA would cover only infringement actions brought before the UPC itself, Art. 32(1)(f) UPCA would concern only provisional protection conferred by a published application, and recognition of a national judgment could not found jurisdiction. Fives appealed. The oral hearing took place on 30 September 2024.

The applicable law

Art. 32(1) UPCA confers exclusive competence on the UPC, in particular for infringement actions (point (a)) and actions for damages derived from the provisional protection conferred by a published European patent application (point (f)). Arts 56, 68 and 83 UPCA govern, respectively, the Court’s general powers, the award of damages and the transitional regime. The Rules of Procedure treat damages as an ancillary request (Rule 118.1 RoP), with separate proceedings for the determination of the amount (Rules 125 et seq. RoP) and interim damages (Rule 119 RoP).

Question

Does the UPC have jurisdiction over a stand-alone damages action after a national court has found infringement and liability in principle, and does that jurisdiction extend to acts committed before the UPCA entered into force?

Decision

Yes on both points (paragraph 83). The wording of Art. 32(1)(a) UPCA neither excludes nor expressly requires such an action (paragraph 44), Arts 56, 68 and 83 UPCA apply only once jurisdiction is established and are of limited help in interpretation (paragraphs 47 and 52). Art. 32(1)(f) UPCA, which allows a damages action without a prior finding of liability, supports jurisdiction (paragraph 48). Regulation No 1215/2012 does not govern the allocation of jurisdiction between the UPC and national courts (paragraphs 55 to 57).

Although the Rules of Procedure treat damages as an ancillary request, they must give way to a combined reading of Arts 32(1)(a) and (f) and 34 UPCA, which allows a stand-alone action. The Court need only verify that the national judgment on infringement exists (paragraphs 73 to 77). REEL’s forum shopping concerns were rejected, divergent national and UPC outcomes being inherent in the system and Art. 68 UPCA being compatible with Art. 13 of Directive 2004/48/EC (paragraphs 78 to 81). Finally, neither Art. 3(c) nor Art. 32(1) UPCA excludes acts committed before 1 June 2023 where the patent had not yet expired (paragraph 82). Exceptional circumstances justified remittal to the same first instance panel (Rules 242.2(b) and 243.1 RoP), which will decide on costs, including those of the appeal (paragraphs 84 and 85).

Key points for practice

• The UPC may assess damages arising from infringement of a European patent found by a national court, without re-examining infringement, which it need only verify has been established.
• Jurisdiction covers acts committed before 1 June 2023, provided the patent was in force on that date.
• The Court of Appeal gives precedence to the UPCA over the structure of the Rules of Procedure, which treat damages as an ancillary request (Rule 1.1 RoP).
• Practical point: a proprietor holding a national infringement judgment may choose the UPC to determine quantum, with Art. 68 UPCA then governing the calculation, which defendants should anticipate.

Provisions applied

Agreement on a Unified Patent Court

Arts 3(c), 24, 32(1)(a) and (f), 34, 56, 68 and 83

Rules of Procedure

Rules 1.1, 19.1(a), 118.1, 119, 125, 242.2(b) and 243.1

European Patent Convention

Art. 64(3)

Directive 2004/48/EC

Art. 13

Regulation (EU) No 1215/2012

Arts 36, 71a, 71b and 71d

Other provisions

Vienna Convention on the Law of Treaties, Art. 31

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.