A guide to the UPC and the UP - Flipbook - Page 182
However, the legal requirements and consequences of doing so differ between Contracting
Member States. 94
Revocation Actions
11-50 Any natural or legal person, or anybody entitled to bring actions in accordance with that body’s
national law may bring a revocation action provided such person “is concerned by [the]
patent”. 95 It is unclear whether a general public interest will be sufficient or whether a specific
legal or commercial interest has to be shown. The latter is not necessary, for example, in
Germany or the EPO, where a person wishing to remain anonymous can apply to revoke or
oppose the grant of a patent through a strawman, i.e; a company set up for the sole purpose
of conducting litigation.
Who is the Defendant?
Infringement Actions
11-51 The defendant is, in broad terms, the person who commits the acts of direct and
indirect infringement in arts 25 and 26 UPCA. Art.32(1) UPCA provides that the Court has
exclusive jurisdiction over such actions and the claimant may claim an injunction (including
a provisional injunction) and damages (including compensation from the date of publication
of the patent application).
11-52 The definition of infringing acts is very wide 96 and, therefore, a number of different
defendants may be involved in what might be thought of as a single instance of infringement,
for example, the manufacture of a product is one act of direct infringement, whilst the keeping
of the product is another and the supply is another. Each defendant is responsible for their
own act of infringement although the claimant can bring an action against one or all of
them provided that the action relates to the same alleged infringement. 97 Double recovery of
damages for any act of infringement is not permitted. If it were otherwise, damages would be
more than compensatory. 98
11-53 Where two or more defendants act together, they may be liable as joint tortfeasors, that is they
are both (or all) jointly liable for the act of infringement and therefore the damage caused to the
claimant. The question of whether there is joint tortfeasorship is answered by national law, 99
although generally some form of common design, as opposed to mere facilitation, must exist
between the defendants.
11-54 In some instances, third parties may be caught up in the infringing act, for example,
intermediaries whose services are being used by the infringer to transport or store goods
or offer them over the Internet. In such cases, the claimant may be able to claim an injunction
against the intermediaries 100 but they may be sheltered from any claim to damages
under arts 68(1) and (4) UPCA as they may lack the necessary knowledge that the act
was one of infringement.
94
95
96
97
98
99
100
See the responses to AIPPI study on “The Impact of Co-Ownership of Intellectual Property Rights on their Exploitation” Q194
available at https://www.aippi.fr/upload/Singapour%202007%20Q193%20194%20195/sr194english.pdf
[Accessed 13 April 2023].
art.47(6) UPCA.
See chapter 10 (Infringement of Unitary Patents (and European Patents Subject to the Court) – Substantive Law).
art.33(1)(b) UPCA.
See chapter 15 (Remedies) paragraphs 15-42 to 15-59 on the calculation of damages.
See chapter 7 (Applicable Law) paragraph 7-74.
For a discussion of injunctions granted against intermediaries, see chapter 15 (Remedies) paragraphs 15-23 to 15-26.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 172
