A guide to the UPC and the UP - Flipbook - Page 286
the Court which heard the case when the parties require an interpretation of a broad form of
injunction in order to assess whether a design-around infringes the patent or not. There is
nothing in the RoP either allowing or not allowing for this and therefore it would be advisable,
at the time of seeking the injunction, to make a request for liberty to apply to the relevant
division of the Court in such a situation.
15-30 Whatever the scope of the injunction, for the unsuccessful defendant, a design-around
is a tightrope walk between the desire to continue to manufacture the product or use
the process on the one hand, and the requirement to comply with the injunction to
avoid punitive measures on the other.
Penalties for Non-compliance
15-31 Non-compliance with a permanent injunction shall, where appropriate, be subject to a recurring
penalty payment payable to the Court. 46 This provision is reinforced in art.82(4) UPCA pursuant
to which a party that does not comply with the terms of an order of the Court may be
sanctioned with a recurring penalty to be paid to the Court. 47 The Court shall set the value
of such payments having regard to the importance of the order in question. 48 In addition,
the individual penalty shall be without prejudice to the party’s right to claim damages. 49
Damages and Compensation
Jurisdiction of the Court
15-32 According to art.32 UPCA, the Court has exclusive jurisdiction in relation to disputes
which may give rise to the award of damages, in particular:
– Actions for actual or threatened infringement of European or Unitary patents and SPCs; 50
– Actions for damages or compensation derived from the provisional protection
conferred by a published European patent application; 51 and
– Actions for compensation 52 for licences of right on the basis of art.8
Unitary Patent Regulation. 53
15-33 Conversely, the Court does not have jurisdiction to award damages relating to other disputes
which fall outside the scope of its jurisdiction, in particular:
– Infringement of national patents or of European patents (1) which have been opted out;
or (2) which gave rise to a dispute before a court of a Contracting Member State during
the transitional period defined by art.83 UPCA;
– Infringement of European or Unitary patents and SPCs that have lapsed
before the entry into force of the UPCA; 54
46
47
48
49
50
51
52
53
54
art.63(2) UPCA.
For further information on recurring penalties, see chapter 16 (Provisional and Protective Measures) paragraphs 16-06 to
16-19 and chapter 19 (Remedies) paragraphs 19-32 to 19-45.
art.82(4) UPCA and r.354(3) RoP.
art.82(4) UPCA.
art.32(1)(a) UPCA.
art.32(1)(f) UPCA. See paragraph 15-59.
The use of the word “compensation” appears in this context to indicate that any relief could, subject to the circumstances,
be wider than the “appropriate compensation” in the licence of right as specified in art.8(1) Unitary Patent Regulation.
art.32(1)(h) UPCA. See chapter 3 (Transactions with Unitary Patents and European Patents Subject to the Court) paragraphs
3-43 to 3-60.
art.3(c) UPCA.
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A Guide to the UPC and the UP 276
