A guide to the UPC and the UP - Flipbook - Page 279
Introduction
15-01 Following a decision on the merits, the Court will have to determine what relief to order.
A broad range of remedies is available.
15-02 In order to stop future infringements, first and foremost the Court has the power to grant an
injunction against the infringer or against an intermediary whose services are being used by a
third party to infringe the patent. 1 Additionally, the Court may order various corrective
measures at the expense of the infringer including recalling or removing infringing products
from retail channels, depriving the products of their infringing property (for example,
by redesigning them to remove the infringing part) or destruction of the infringing product
and/or materials and implements principally used to create or manufacture them. 2 The Court
may also order the infringer to make a declaration of infringement, that is, a positive
declaration confirming that the defendant’s product falls within the claim or claims of the
patent and is thereby infringing the exclusive right of the patent. 3
15-03 At the request of the applicant, the Court may further order the infringer, or various third
parties, to give the applicant information regarding the origin and distribution channels of the
infringing product or processes; quantities produced, manufactured, delivered, received and
ordered; the price obtained for infringing products and the identity of any third parties involved
in production or distribution. 4 The claimant will be able to use this information to pursue other
infringers in order to clear the market of goods and to assess damages and compensation
payable by the defendant. 5 The Court also has the power to make an order for publication of
the decision at the request of the applicant and at the expense of the infringer. 6
15-04 In a revocation action where the patent in suit is found invalid, the Court will revoke it. If the
revocation action succeeds only in part, the patent will be limited by amendment of the claims
and revoked in part. 7 To the extent that the patent, or part of it, is revoked, it shall be
considered to be void ab initio, that is, it shall be deemed not to have had any effect. 8 As a
consequence, if there is a finding of infringement, no damages are payable for the provisional
protection conferred by the publication of the European patent application up to the date when
the patent was revoked. 9 Consistent with this, the RoP provide that if an enforceable decision
has been made pursuant to a finding of infringement and the patent is later revoked or
amended, the Court may order, upon request, that the decision ceases to be enforceable. 10
15-05 Finally, the Court has the ability to award that the unsuccessful party pay the legal costs
and other expenses incurred by the successful party. 11
15-06 This chapter considers the following topics:
– Permanent injunctions;
– Damages and compensation;
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art.63(1) UPCA and r.118(1) RoP. See paragraphs 15-07 to 15-31.
art.64(2)(b) to (d) UPCA. See paragraphs 15-99 to 15-103.
art.64(2)(a) UPCA. See paragraphs 15-92 to 15-98 for this and other types of declarations.
arts 67(1) and (2) UPCA. See also chapter 18 (Orders to Produce Evidence Including “Saisies”) paragraphs 18-86 to 18-105.
art.68 UPCA and r.118(1) RoP. See paragraphs 15-32 and 15-91.
art.80 UPCA. See paragraph 15-104.
art.65(4) UPCA referring to arts 64 and 67 EPC.
arts 64 and 67 EPC.
This is in contrast to surrendering a patent, which takes effect ex nunc, that is, from the date the offer to surrender was
accepted.
r.354(2) RoP.
art.69(1) UPCA. Details of the procedure and the amounts that can be claimed are found in chapter 20
(Court Fees and Recoverable Costs).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 269
