A guide to the UPC and the UP - Flipbook - Page 295
15-63 The expression “damages” as used in rr.125 to 144 RoP is deemed to include such
compensation and interest at the rate and for the periods that the Court shall decide.
15-64 Proceedings for the determination of damages must be initiated no later than one year from
service of the final decision on the merits, including any final decision on appeal, on both
infringement and validity, or one year from the date of a relevant order. 89 The relevant orders
are:
– r.118(1) RoP – damages ordered at same time as a decision on the merits. On the face of it,
such a requirement may appear to force a patentee to commence the determination of
damages whilst the appeal is ongoing. However, the successful patentee has one year from
a final decision on the merits, “including any appeal” to make an application for the
determination of damages. Therefore, if there is an appeal on infringement or validity,
the one year time limit does not start running until the decision on appeal has been made.
– r.198(2) RoP – compensation on revocation or lapse of an order to preserve evidence or a
subsequent finding of no infringement;
– r.213(2) RoP – compensation on revocation or lapse of provisional measures or a
subsequent finding of no infringement; or
– r.354(2) RoP – compensation awarded when a decision or order has been enforced and that
decision or order is subsequently varied or revoked.
15-65 During the public consultation on the RoP, the Council of Bars and Law Societies of Europe
(CCBE) argued that imposing a deadline for requesting a determination of damages was
wrong in principle and was not covered by art.68 UPCA. 90 It was also argued that a one year
limit was arbitrary and that the parties or the Court should be able to extend the deadline
where necessary. However, the arguments were rejected, 91 the response being that such a time
limit was an adequate compromise, as it would enable the same panel of judges which dealt
with the case on the merits to hear the damages proceedings. It is still possible for the
unsuccessful defendant to seek a stay of the damages proceedings under r.136 RoP 92
where there are circumstances such that for one or other of the parties it would not be
proportionate to be required to deal with damages within this one year period, for example,
where separate proceedings for invalidity are still ongoing. It should be noted that the party
seeking damages has no right to seek such a stay.
15-66 Therefore, if the procedure of “laying open of books” is sought by the party seeking damages
and this procedure appears to be protracted, that party must be careful to commence the
damages phase within the necessary twelve-month period even if the laying open of books
procedure has not concluded at that point. To avoid any problems due to missing this deadline,
it is advisable to adopt the procedure where the damages procedure is started and the laying
open of books procedure is requested as part of this. 93
Contents of the Application
15-67 The successful party seeking a ruling on the amount of compensation shall lodge an application
which must include the same information about the claimant and about the defendant as that
89
90
91
92
93
r.126 RoP.
“15th Draft of the Rules of Procedure of the Unified Patent Court dated 31 May 2013, Comments from the Council of Bars
and Law Societies of Europe (CCBE)” 18 October 2013, available at
http://www.ccbe.eu/fileadmin/user_upload/NTCdocument/18102013_EN_CCBE_dra1_1382346083.pdf
[Accessed 14 April 2023].
“Responses to the Public Consultation on the [15th draft] Rules of Procedure of the UPC: Digest of Comments Received”
6 March 2014, p.111.
See paragraph 15-77 and 15-78.
See paragraph 15-67.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 285
