A guide to the UPC and the UP - Flipbook - Page 283
Bifurcated Proceedings
15-18 An injunction may be granted in bifurcated proceedings, subject to the condition subsequent
that the patent is not held to be wholly or partially invalid by the final decision in the revocation
proceedings. 26 The order granting the injunction may also be made subject to the rendering of
security by the claimant to the defendant for legal costs and other expenses and compensation
for any damage incurred or likely to be incurred if the order is enforced and subsequently
revoked. 27 Even if security is not ordered, where the original order was enforced and is
subsequently varied or revoked, the Court may order the claimant to compensate the
defendant for the injury caused by the enforcement. 28
Threatened Future Infringements
15-19 Art.63(1) UPCA provides that the Court may grant permanent injunctions prohibiting
“continuation” of an infringement. 29 The drafting raises the question as to how a permanent
injunction can then apply to an infringement which has not yet started. However, the purpose
of art.63(1) UPCA must be to stop future infringements in order to preserve the proprietor’s
exclusive right in the patent. Such a construction would be consistent with other provisions in
the UPCA, which provide that a patentee may bring proceedings for threatened as well as actual
infringement. 30 Furthermore, provisional injunctions can be granted in order to prevent
imminent infringement, 31 and the UPCA allows the Court to order the freezing of a defendant’s
assets where the patent has not yet been, but is about to be, infringed. 32
Injunction Extending after Expiry of the Patent
15-20 The standard form of injunction will cease to have effect when the underlying patent expires.
However, in certain exceptional circumstances, national courts have granted injunctions to
extend beyond the expiry of the patent. The aim is to prevent the infringer from gaining an
advantage from the start or “springboard” that it secured by infringing the patent close to its
expiry, as a result of which it might be able to get onto the market earlier than would otherwise
have been the case. The injunction is limited in its scope to the specific infringement and is
granted for a limited and specific period of time beyond the expiry of the patent so, as far as
possible, to place the patentee in the position it would have been had the patent right been
respected. Such an injunction was first granted in Germany in a case where a field test had
been conducted in order to obtain official approval for the sale of a herbicide. The field test was
held to infringe the patent and, since it was commenced before the expiry of the patent, the
defendant had to remedy the injury by refraining from using the results until the time the field
test would have been completed if it had been commenced after the expiry of the patent. 33
26
27
28
29
30
31
32
33
r.118(2)(a) RoP. Alternatively, a stay may be ordered under r.118(2)(b) RoP. See chapter 14 (Oral Proceedings) paragraphs
14-58 to 14-64 for further information on the factors that apply in bifurcated proceedings.
rr.118(8) and 352(1) RoP. See chapter 19 (Enforcement) paragraphs 19-46 to 19-64.
r.354(2) RoP. See chapter 19 (Enforcement) paragraphs 19-65 to 19-71.
The word “continuation” appears in art.11 Enforcement Directive, but there has been no suggestion that its use there should
prevent injunctions from being granted in relation to threatened future infringements.
art.32(1) UPCA.
art.62(1) UPCA.
art.61 UPCA.
Decision of the Federal Supreme Court (Der Bundesgerichtshof) in Ethofumesat 1990 GRUR 997, 22 IIC 541.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 273
