A guide to the UPC and the UP - Flipbook - Page 176
11-19 The RoP have been the subject of very broad consultation and an opinion had to be sought
from the European Commission on their compatibility with EU law before finally being
adopted by the Administrative Committee. 36 In the event of any conflict between the RoP
and the provisions of the UPCA and the UPCA Statute, the latter will prevail. 37
Case Management System
11-20 Cases are managed through an electronic case management system, which serves as the core
collaboration platform for performing the tasks of the Court. It is a single platform and data
repository, through which documents are filed and cases managed. The case management
system is accessible to users through the Court’s website at https://secure.unified-patentcourt.org/login. Users must have their identity authenticated before being able to use the
case management system.
Figure 11-1: The Procedural Stages Before the Court
Written
procedure
Interim
procedure
Oral
procedure
Decision
Determination
of damages
Costs order
Pre-action Procedures
Letters Before Action
11-21 There is no mandatory pre-action procedure in the UPCA or the RoP. The claimant, therefore,
will not face specific costs sanctions if it fails to warn the defendant that proceedings are about
to be issued. 38 However, the Court has a wide discretion when considering what costs to award
the successful party and if equity requires, can alter the general rule that the loser pays the
winner’s costs. 39 One of the factors it can take into account is the procedural behaviour of
the parties. Thus where a claimant brings an action without prior notice and the defendant
surrenders immediately, the Court will probably refuse to award any costs to the claimant.
The Court may also, if it considers the matter exceptional, deny or reduce the reimbursement
of Court fees. 40
11-22 A patentee should also bear in mind that alleged infringers, unless they receive a translation of
the Unitary patent in a language they understand, may not know or may not have reasonable
grounds to know that their acts are infringing and this will be taken into consideration by the
Court when assessing a claim for damages. 41 Clearly, this is a presumption which may be
overturned by appropriate evidence from the patentee, such as putting the alleged infringer
on notice by sending a copy of the patent and the necessary translation. 42
36
37
38
39
40
41
42
As required by art.41(2) UPCA.
art.41(1) UPCA and r.1(1) RoP.
Note that in relation to standard essential patents (SEPs) i.e. those patents where an irrevocable undertaking to grant a
licence on FRAND terms has been given to a standards setting body, bringing a claim for infringement which includes a claim
for an injunction without prior notice will necessarily be an abuse of a dominant position, even if the SEP has already been
used by the alleged infringer. See Huawei Technologies Co. Ltd v ZTE Corp. & anr. (C-170/13) ECLI:EU:C:2015:477 at [61].
art.69 UPCA. See chapter 20 (Court Fees and Recoverable Costs).
r.370(9)(b) and (e) RoP. Procedural behaviour is specifically mentioned as one of the factors the Court must consider in
relation to the reimbursement of fees.
art.4(4) Translation Regulation refers in particular to where the alleged infringer is an SME, natural person, a non-profit
organisation, a university or a public research organisation.
art.4(4) Translation Regulation provides that the alleged infringer may request that the translation is provided in an official
language either of the Member State in which the alleged infringement took place or the Member State in which the alleged
infringer is domiciled.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 166
