A guide to the UPC and the UP - Flipbook - Page 302
Declaration of Infringement
15-95 In infringement proceedings, as a corrective measure and at the request of the claimant, the
Court may order that appropriate measures be taken with regard to products found to be
infringing a patent. 136 Such measures may also include a declaration of infringement. 137
A declaration of infringement is a positive declaratory judgment confirming that the defendant’s
action falls within the scope of protection of the patent and the defendant is infringing the
exclusive right granted by a patent. The measures are without prejudice to any damages due to
the injured party. Accordingly, a declaration of infringement may be accompanied with one or
more other remedies, usually an injunction and/or damages.
Declaration of Invalidity of the Patent
15-96 Pursuant to art.32 UPCA, the Court has exclusive competence, inter alia, in respect of actions
for revocation of patents, counterclaims for revocation of patents, and for declarations of
invalidity of SPCs. A patent may be revoked either entirely or partially. 138 The Court may also
limit the scope of a patent on the application to amend the patent by the patent owner.
The patent owner may want to amend the patent as a defence to revocation. 139 Bearing in
mind the competence of the Court in this regard, whilst not specifically allowed for in the UPCA,
it seems reasonable to believe that the Court may be prepared to issue declarations to this
effect in suitable circumstances.
Other Declarations
15-97 In the courts of some Contracting Member States and the UK as a former Contracting
Member State it is possible to obtain declaratory relief other than that specified in
art.32 UPCA. For example, “Arrow” declarations are recognized in the Netherlands. 140
These are a discretionary remedy which may be used to clear the way in cases where,
because the patents potentially blocking a new product or process are not yet granted,
a declaration of non-infringement would not be available. Such declarations provide that the
intended product or process was known or obvious at the priority date of the patent application
of concern. It is also possible in the UK to obtain a declaration that a particular patent is not
essential to a particular technical standard. 141
15-98 On the face of art.32 UPCA, it appears that these more unusual declarations are not available to
the Court. However, it may be possible to introduce one or more of them in an alternative
format that allows them to fall within the scope of one of the permitted declarations such as a
declaration of non-infringement.
Other Corrective Measures
15-99 At the request of a claimant, the Court may make an order for various forms of
corrective measures. Art.64 UPCA sets out that such measures may be ordered with regard
to products found to be infringing a patent and, where relevant, with regard to materials and
implements principally used in the creation or manufacture of those infringing products.
136
137
138
139
140
141
art.64(1) UPCA.
art.64(2) UPCA.
art.65(2) UPCA.
See chapter 12 (Written Procedure) paragraphs 12-107 to 12-129 for details of proceedings as regards revocation of patents
and paragraphs 12-75 and 12-91 for details of proceedings relating to the amendment of a patent.
“Arrow” declarations are also recognised in the UK. See for example Fujifilm Kyowa Kirin Biologics Co, Ltd. v AbbVie Biotechnology
Ltd [2017] EWCA Civ 1.
See for example Nokia Corporation v InterDigital Technology Corporation [2007] EWHC 3077 (Pat).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 292
