A guide to the UPC and the UP - Flipbook - Page 287
– Misappropriation of an invention;
– Compensation to be paid to the inventor or to an employee who took part
in the devising of the patented invention;
– Breach of a patent-related agreement (even if it relates to a Unitary patent), except licences
of right granted on the basis of art.8 Unitary Patent Regulation; and
– Unfair competition acts, parasitism, misappropriation of trade secrets or know-how.
Applicable Law
15-34 There are no provisions relating to damages in the Unitary Patent Regulation, but recital
13 states that the regime applicable to damages in relation to Unitary patents should be
governed by the laws of the Participating Member States, 55 in particular the provisions
implementing art.13 Enforcement Directive. Although the approach in recital 13 Unitary
Patent Regulation could subject a Unitary patent to a mosaic of different national approaches in
relation to damages, the harmonizing effect of art.13 Enforcement Directive should ensure that
this does not occur in relation to the damages calculation itself. Furthermore, the Court awards
damages relating to both Unitary and European patents in the light of various sources of law
as listed in art.24 UPCA. After EU law (including the Unitary Patent Regulation), the Court will
apply art.68 UPCA which is based on and is very similar to art.13 Enforcement Directive.
Only where there are gaps left, the Court will apply national law, including where relevant
the law of non-Contracting Member States. 56
Limitation Period and its Application
15-35 Art.72 UPCA sets a specific limitation period applicable to actions for compensation brought
before the Court as follows:
“Without prejudice to Article 24(2) and (3), actions relating to all forms of financial compensation
may not be brought more than five years after the date on which the applicant became aware,
or had reasonable grounds to become aware, of the last fact justifying the action”.
15-36 Ignoring the reference to art.24 UPCA for the time being, the trigger point for the limitation
period is determined by “the date on which the applicant became aware, or had reasonable
grounds to become aware” of the relevant infringing act. For example, in the case of a method
claim in a patent, it could be that the process used by the proposed defendant is not known to
the patentee for some time but the patentee later becomes aware of it on seeing a scientific
paper that clearly points to the fact that an infringing process was used by the defendant.
Under those circumstances, the patentee has five years from the date of being fixed with that
knowledge to make the claim. There is no limit on how long ago that act took place before the
patentee became aware of it. This would mean that compensation could be claimed for many
years prior to the “last fact justifying the action”. The only limit is whether there were
reasonable grounds to expect the patentee to have known about it before the date on which
it became fixed with actual knowledge. If this is correct, the limitation system of art.72 UPCA
could be illustrated as set out in figure 15-1.
55
56
The Unitary Patent Regulation refers to Participating Member States whereas the UPCA refers to Contracting Member States.
In practice, they are one and the same since art.18(2) Unitary Patent Regulation provides that a Unitary patent only has effect
in those Member States where the Court has exclusive jurisdiction.
art.24 UPCA. Art.24(3) UPCA specifically refers to art.68 UPCA.
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A Guide to the UPC and the UP 277
