A guide to the UPC and the UP - Flipbook - Page 275
Rectification of Decisions or Orders
14-57 Where there are clerical mistakes, errors in calculation and obvious slips in the decision
or order, the Court may either of its own motion or on application of a party made within
one month of service of the decision or order to be rectified and after hearing the parties,
rectify the decision or order by way of a further order. 117
Bifurcated Proceedings
14-58 Before making its decision in a bifurcated case, 118 a local or regional division must consider
the revocation action and its potential effect on the parties to the infringement proceedings.
In summary, the Court has a discretion either to render its decision and make subsequent
orders which would be enforceable against the defendant, despite the fact that the decision
could become ineffective, or to stay the proceedings pending a decision on validity.
14-59 The relevant rule, r.118(2) RoP, depicted in figure 14-1, also applies where there are opposition
proceedings pending before the EPO. It states that where there are revocation proceedings
relating to the patent in suit pending before the central division between the same parties
or opposition proceedings pending before the EPO (which do not need to be between the
same parties), the local or regional division may:
– Under r.118(2)(a) RoP, render its decision on the merits of the infringement claim, including
its orders, under the condition subsequent pursuant to art.56(1) UPCA 119 that the patent is
not held to be wholly or partially invalid by the final decision in the revocation proceedings
or a final decision of the EPO respectively or under any other terms or conditions; 120 or
– Under r.118(2)(b) RoP, stay the infringement proceedings pending a decision in the
revocation procedure or a decision of the EPO.
14-60 R.118(2)(b) RoP goes on to state that, in those cases where the Court considers that there is
a high likelihood that the claims of the patent in question will be found to be invalid by a
final decision in the revocation proceedings or a final decision of the EPO, the Court has
no discretion, it must stay the infringement proceedings provided that, in the case of the
opposition proceedings in the EPO, they are expected to be given rapidly. 121 Rapidly, in light
of the quick procedure in the Court, would indicate a matter of no more than a few months. 122
14-61 As the Court will not want the issue of the stay effectively to become a trial of the invalidity
issues, the reasons why the relevant claims will be held invalid by the central division or the EPO
must be clearly spelt out in the defendant’s evidence such that they are obvious to the Court.
117
118
119
120
121
122
r.353 RoP.
For more on bifurcation and a discussion of internal causes for a stay under arts 33(3), (5) and (6) UPCA, see chapter 6
(Jurisdiction, Competence and Forum Shopping) paragraphs 6-85 to 6-90.
Which refers to the ability of the Court to attach conditions to its orders, subject to the RoP. Such conditions can include
the ordering of security to be provided by the claimant to the defendant (r.118(8) RoP).
Such conditions might, where an injunction is ordered, require a claimant to provide a security before it can be enforced
(r.118(8) RoP).
r.118(2)(b) RoP combines two aspects of other rules: (1) r.37(4) RoP which sets out how the panel should proceed if it
decides to bifurcate the proceedings at the close of the written proceedings (see chapter 6 (Jurisdiction, Competence and
Forum Shopping) paragraphs 6-85 to 6-90) and in this respect is identically worded to r.118(2)(b) RoP; and (2) r.295(a) RoP
which provides that the Court may stay proceedings where a decision of the EPO or a national authority is expected to be
given rapidly.
Note that a decision by the Opposition Division can be appealed to the Technical Board of Appeal and can then, in certain
circumstances, be remitted back to the Opposition Division for further consideration, a process which can take years.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 265
