A guide to the UPC and the UP - Flipbook - Page 303
There is no further guidance in the UPCA or RoP as to what amounts to materials or
implements which are principally used in the manufacture of an infringing product.
15-100 Art.64(2) UPCA provides a non-exhaustive list of corrective measures that the Court may order
as follows:
– A declaration that the patent has been infringed (already discussed above); 142
– Recall of the products found to be infringing the patent from the relevant channels
of commerce;
– Definitive removal of the products found to be infringing the patent from the channels
of commerce;
– Elimination of the infringing element of the accused product or method; and
– Destruction of infringing products and of any materials or implements used to manufacture
the same.
15-101 The Court shall order that the cost of such corrective measures is to be borne by the infringer,
unless there are specific reasons where this would not be appropriate. 143 There is to be no
compensation paid to the wrongdoing party for implementing any corrective measure.
15-102 In its consideration of an application requesting the imposition of these corrective measures,
the Court shall take into account three factors: 144
– The need for proportionality between the seriousness of the infringement and the remedies
to be ordered;
– The willingness of the infringer to convert the infringing products into a non-infringing
state; and
– The interests of any third parties.
15-103 The injured party may obtain a court order for any of these corrective measures. Such an order
has no effect on the party’s right to obtain damages as a result of the infringement.
Publication of Decision
15-104 Pursuant to art.80 UPCA, the Court may also order publication of a decision. This is in addition
to the publication of the decision by the Registrar on the Court’s case management system. 145
The wording of art.80 UPCA mirrors much of the wording of art.15 Enforcement Directive with
two, apparently minor, differences. The first of these is that art.80 UPCA does not use the same
such explicit wording to limit the order to publications of decisions relating to infringement.
The second difference is the reference to inclusion at the end of art.80 UPCA of the limitation
that the publication of the decision is limited to inclusion in “public media”. This will clearly
include usual options for dissemination, such as notices on websites and social media as well as
the more usual and advertisements in newspapers. Art.80 UPCA specifies that publication of
any decision when ordered is to occur at the expense of the infringer.
142
143
144
145
See paragraph 15-95.
art.64(3) UPCA.
art.64(4) UPCA.
art.23(2)(d) UPCA Statute.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 293
