A guide to the UPC and the UP - Flipbook - Page 288
Figure 15-1: Limitation Periods under art.72 UPCA
Last fact justifying the action
Facts justifying
the action
Applicant aware of the facts
(or there are reasonable
grounds to be aware)
Too late to bring actions
relating to all forms of
financial compensation
5-year period in which an action for
compensation can be brought
Period over which compensation for
past infringing acts maybe claimed
15-37 However, such a scheme would be unfair to the defendant. As in most Contracting
Member States, a fairer system would be to limit the recovery of damages to a period of, say,
five years before the issue of proceedings. Indeed, in a late draft of the UPCA, such a five year
limitation period was included as a cap to what is now art.72 UPCA. 57 This was removed in the
very next draft without explanation, but the reason must be the insertion of the reference to
what is now arts 24(2) and (3) UPCA. The cap was therefore no longer needed because of the
reference to the Court basing its decisions on national law.
15-38 As a consequence, the limitation periods in national law are not replaced by art.72 UPCA, but
the two apparently sit side-by-side. Whilst fair to a defendant, the requirement that a patentee
must bring a claim within five years of the date on which it becomes aware of the infringement
could possibly be seen as harsh because the rule applies even if the infringement is on-going.
However, in practice, limitation periods do not normally dictate whether or not proceedings can
be commenced for compensation since such proceedings are generally begun when the
patentee becomes aware of an on-going infringement.
15-39 The limitation periods across Contracting Member States are not harmonized. Table 15-1
below sets out the limitation periods applied in national law in a selection of Contracting
Member States.
57
art.44a draft agreement on a Unified Patent Court – Consolidated text, 14268/12 PI 113 COUR 66, 27 September 2012,
available at http://data.consilium.europa.eu/doc/document/ST-14268-2012-INIT/en/pdf [Accessed 14 April 2023].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 278
