Dolle v FAKRO Dachflächenfenster (CFI, 5 November 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 5 November 2025, given in infringement action UPC_CFI_461/2024 and counterclaim for revocation UPC_CFI_718/2024, the Hamburg Local Division, sitting with a technically qualified judge, ruled on the dispute between Dolle A/S and four FAKRO companies over EP 2 476 814 (loft ladder with an insulated hatch). It dismissed the counterclaim, the patent being valid as granted, and found infringement of claim 1 in Denmark, Germany, Austria and Sweden, granting an injunction, recall and removal from the channels of commerce, information with supporting documents, an interim award of EUR 3,000, a declaration of liability for damages and quantified penalty payments. The defendants bear 90% of the costs of the action and all the costs of the counterclaim.

The decision is of interest for its three headnotes: the « same invention » concept in Art. 87 EPC follows the disclosure test for added matter. A new inventive step attack raised at the oral hearing is an amendment of the counterclaim, inadmissible here. A general term in the claim is not, without more, limited to the prior art embodiment cited in the patent. Following the Court of Appeal, it also holds that the time limit for providing information must be included in the request and, failing that, set by the claimant when notifying its intention to enforce.

Facts and procedure

Dolle alleged that the defendants offered and marketed in Denmark, Germany, Austria and Sweden the GREENSTEP LME Energy Efficient and GREENSTEP LMT Super Thermo ladders, and sought among other things an injunction, recall, information, EUR 120,000 in provisional damages and penalty payments. FAKRO counterclaimed for revocation in full. Dolle filed auxiliary requests to amend. The hearing took place on 23 September 2025. The infringement action was held admissible, the acts complained of being specified by reference to the defendants’ website and brochures (paragraph 55), and the counterclaim falls within the UPC’s exclusive jurisdiction (Art. 32(1)(e) UPCA, paragraph 56).

The applicable law

The claim is construed under Art. 69 EPC and its Protocol, with the description and drawings used for interpretation (paragraphs 67 to 70). Added matter is a ground for revocation (Art. 138(1)(c) and Art. 123(2) EPC): the question is what the skilled person derives directly and unambiguously from the application as a whole, including what is implicitly disclosed (paragraph 91). Priority requires the same invention (Art. 87 EPC).

Question

Is the patent invalid for added matter, insufficiency, invalid priority, lack of novelty or lack of inventive step, do the GREENSTEP ladders infringe it and, if so, what remedies should be ordered against each of the four defendants?

Decision

A « foldable » ladder requires parts that fold relative to one another, which excludes a scissor ladder (paragraphs 72 to 74), the frame bears the main load, the hatch is not load-bearing but may carry minor loads, the hinge is not limited in design and the hatch must consist mainly of insulation (paragraphs 75 to 88). The objections of added matter (paragraphs 90 to 106) and insufficiency (paragraphs 107 to 112) were rejected. Priority from the German utility model of 14 January 2011 is valid, as features 1.6 and 1.7 can be derived from it directly and unambiguously (paragraphs 113 to 119). Documents NK 22 and NK 23, filed out of time, are not prior art as they do not predate the patent, so their admission was left open (paragraphs 122 to 127). The « Columbus » and « Dolle alu-top » prior uses concern scissor ladders and hatches not mainly made of insulation (paragraphs 128 to 135 and 140 to 144). The inventive step attack first raised at the hearing, starting from « Columbus », is an amendment under Rule 263 and was refused, since the defendants should have raised it at the latest in their final pleading on the counterclaim (paragraphs 136 to 139). Inventive step was upheld: starting from the « Wippro GM-4 Isotec », the skilled person would not have replaced the rock wool or the metal frame, the emphasis on fire protection leading away from doing so (paragraphs 150 to 170), the combinations starting from JP 2000-336920 and US 2009/0241434 fail (paragraphs 171 to 197). Literal infringement was established (paragraphs 199 to 208). All four defendants are liable, the Danish company having adopted the offer on fakro.com through a link from the country selector, and there being a risk of marketing in Sweden (paragraphs 209 to 214). Recall is not disproportionate given the small quantities sold, but a time limit was granted (paragraphs 216 to 218). Information may be required with invoices and for the period before the UPCA entered into force, and need not be confined to the claimant’s counsel (paragraphs 220, 221 and 223), since no time limit was set in the decision, the claimant must set it when notifying enforcement (paragraph 222). The interim award was limited to EUR 3,000, as the value of the future damages proceedings was not established (paragraphs 224 to 227). No security for enforcement was ordered, as the defendants put forward no grounds (paragraphs 230 to 233). The value was set at EUR 1,000,000 for the action and EUR 1,500,000 for the counterclaim, a 50% uplift under the Administrative Committee’s guidelines (paragraphs 234 and 235). The operative part orders the injunction, recall and removal of products delivered since 5 June 2021 within 30 days, information and the interim award, declares liability for damages, provides for penalty payments of at least EUR 10,000 per product and EUR 500 and EUR 250 per day, otherwise dismisses the action, dismisses the counterclaim, splits the costs of the action 90% to 10%, puts the costs of the counterclaim on the defendants and makes enforcement conditional on notification and translation. The panel was presided over by Judge Klepsch, who was also judge-rapporteur.

Key points for practice

• The « same invention » test for priority is the direct and unambiguous disclosure test applied to added matter.
• An inventive step attack raised at the oral hearing, even on documents already on file, is an amendment subject to Rule 263 and may be refused.
• A company that links to the website of a group company offering the products adopts that offer and is liable for infringement.
• Practical point: claimants should include a time limit in their request for information, otherwise they will have to set it when notifying their intention to enforce.

Provisions applied

Agreement on a Unified Patent Court

Arts 25(a), 26, 31, 32(1)(a) and (e), 33, 63, 64, 67, 68, 69 and 82

Rules of Procedure

Rules 8.1, 19, 25, 30.2, 118.5, 118.8, 119, 131.2, 132, 191, 263, 352.1 and 354.3

European Patent Convention

Arts 54, 56, 69, 83, 87, 123(2) and 138(1)

Regulation (EU) No 1215/2012

Art. 71b

Case law cited

Expert e-Commerce v Seoul Viosys, Court of Appeal, 2 October 2025, Abbott Diabetes Care v Sibio, Court of Appeal, 14 February 2025, Hartmann Packaging v Omni-Pac, Düsseldorf Local Division, 15 October 2025, Kodak v Fujifilm, Court of Appeal, 14 October 2025, Court of Appeal, 21 May 2025 (UPC_CoA_365/2025), Brita v Aquashield, Munich Local Division, 22 August 2025, Paris Central Division, 21 January 2025 (UPC_CFI_311/2023)

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.