A guide to the UPC and the UP - Flipbook - Page 289
Table 15-1: Limitation Periods in National Law
Contracting Member State
National law
Austria
Claims are normally time-barred within a period of three years
starting from the moment the patent owner has knowledge about
the damage and the person infringing the patent.
France
The limitation period is five years from the instance of infringement.
Germany
In principle, the general period for limitation in the German Civil
Law applies, e.g., three years starting at the end of the year in which
the patentee has become aware or had to become aware of the
infringing activity and the infringer. The claim for residual damages
founded on the statutes of unjust enrichment is time-barred after
10 years.
Sweden
A claim for compensation for patent infringement may only cover
damages during the five years immediately before the action was
brought before court.
15-40 It has been pointed out that if national limitation periods apply in addition to art.72 UPCA, it
contradicts the objectives of the UPCA for Unitary patents under the Unitary Patent Regulation
and European patents under art.34 UPCA. 58 However, the suggested solution to disregard the
part of the provision referring to arts 24(2) and (3) UPCA cannot be an answer. It has also been
suggested that the reference to arts 24(2) and (3) UPCA in art.72 UPCA means that the
applicable national law can also be a basis for claiming a forfeiture of the asserted right, for
example, if the patentee did not assert its right and the infringer had a reasonable expectation
that the patentee would not assert it later. 59 However, as such defences based on estoppel go
wider than the claim to financial compensation to which art.72 UPCA relates, it is arguable that
such claims based on national law may not be successful.
15-41 From a procedural standpoint, the limitation period under art.72 UPCA is not one of the
issues that can be raised in the context of preliminary objections, which must be lodged within
one month of the service of the SoC. 60 Consequently, if the limitation period has lapsed on the
date of filing of the SoC, the defendant must raise an argument based on art.72 UPCA along
with its other arguments on the merits in its SoD. 61 The defendant ought then to apply to the
Court to strike out the claim on the basis that there is an absolute bar to proceeding with it. 62
Although art.72 UPCA only time bars actions where compensation is claimed, and does not
constitute a time bar for bringing actions for non-financial remedies as would be the case for
a true statute of limitation, the limitation periods in national law would allow for such
an application.
58
59
60
61
62
Tilmann W, “The UPC Agreement and the Unitary Patent Regulation – construction and application”, Journal of Intellectual
Property Law & Practice, 2016, Vol.11, No.7, pp.545 to 558 at p.557.
Hoffmann Eitle, “The EU Patent Package Handbook, A Practitioner’s Guide” (CreateSpace Independent Publishing Platform,
2014) para. 8.3.5.9.
r.19 RoP.
rr.23 and 24 RoP.
The Court may decide at any time, after giving the parties an opportunity to be heard, that there exists an absolute bar to
proceeding with an action (r.362 RoP).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 279
