A guide to the UPC and the UP - Flipbook - Page 280
– Declarations;
– Other corrective measures; and
– Publication of decisions.
Permanent Injunctions
Granting an Injunction
15-07 Art.63(1) UPCA states that where the Court finds that a patent has been infringed, it may grant a
permanent injunction against the infringer in order to prevent continuation of the infringement.
The use of the word “may” indicate that the Court has a discretion as to whether to grant
an injunction or not. However, no guidance is given in the UPCA or the RoP as to how
such discretion might be exercised. In contrast, when considering whether to grant a
provisional injunction, the Court is directed to weigh up the interests of the parties and take
into account the potential harm to either of them in granting or refusing the injunction. 12
This begs the question of whether the lack of similar guidance in relation to the grant of a
permanent injunction suggests that such factors should not be considered by the Court.
Proprietors are, after all, granted exclusive rights to prevent third parties from directly or
indirectly using the invention without their consent 13 and thus the grant of such exclusive rights
arguably shifts the balance in favour of issuing the injunction once infringement has been
found by the Court. However, this would be to ignore the use of the word “may” in art.63 UPCA.
Better guidance might therefore be found in art.64 UPCA which directs the Court to consider
the requirement for proportionality between the seriousness of the infringement and the
remedy to be ordered when considering whether to grant certain corrective measures. 14
But, as noted before, no such wording is included in art.63 UPCA.
15-08 Turning to the TRIPS Agreement, exclusive rights are conferred on the owner of a patent for
direct infringement, 15 but instead of being directed to the courts, the provision on the grant of
permanent injunctions is directed to WTO members: Art.44(1) TRIPS Agreement states that the
judicial authorities shall have the authority to order a party to desist from an infringement. 16
Similarly, the Enforcement Directive is directed towards Member States but does not use the
word “shall”, rather it stipulates that the judicial authorities “may” issue an injunction against
the infringer to prohibit the continuation of the infringement. 17
15-09 Nevertheless, both the TRIPS Agreement and the Enforcement Directive contain general
principles which should guide the Court in deciding whether and, if so, how to exercise its
discretion to grant a permanent injunction. Firstly, the TRIPS Agreement states that:
“Members may provide limited exceptions to the exclusive rights conferred by a patent,
provide that such exceptions do not unreasonably conflict with a normal exploitation of the
patent and do not unreasonably prejudice the legitimate interests of the patent owner,
taking account of the legitimate interests of third parties”. 18
12
13
14
15
16
17
18
art.62(2) UPCA.
arts 25 and 26 UPCA. Note that there are limitations to these exclusive rights as set out in art.27 UPCA.
art.64(4) UPCA.
art.28 TRIPS Agreement.
Thus, it has been argued that the word “may” in art.63(1) UPCA is to be understood in the stronger sense of “shall have the
authority to” when considering its purpose (telos). See Marfé M et al., “The power of national courts and the Unified Patent
Court to grant injunctions: a comparative study”, JIPLP, 2015, Vol. 10, No. 3, pp.180 to 190 at p.188.
art.11 Enforcement Directive.
art.30 TRIPS Agreement.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 270
