A guide to the UPC and the UP - Flipbook - Page 306
Subject Matter of the Various Measures
Provisional Injunction
16-06 Two circumstances are identified in art.62(1) for which the Court is empowered to grant
provisional injunctions. These are:
– To prevent any imminent infringement; and
– To prohibit on a provisional basis the continuation of an alleged infringement.
16-07 The former is therefore a prospective measure intended to stop infringement from
commencing. In respect of the latter, the Court is permitted to allow the infringement to
continue if the respondent to the injunction provides guarantees intended to ensure the
patentee is compensated. The Court is also empowered to make the injunction subject to a
“recurring penalty payment”. 5 The “astreinte” under Belgian and French national law is a
payment of sufficient magnitude to deter continued infringement but is not a payment of
damages as such. The word “penalty” most likely means that such a payment would not be
paid to the rights holder but rather to the Court (as is the case for permanent injunctions). 6
It may also suggest that the payment can be larger than a damages-based payment because
its purpose is not compensatory, but dissuasive.
16-08 In Germany, a typical order granting a provisional (preliminary) injunction is subject to a penalty
payment or even imprisonment (although the latter is rather theoretical) in case of a violation. 7
The penalty payment is calculated in relation to the economic effect of the violation on the
patentee. It can add up quickly in cases of repeated violations. The money goes to the state,
not to the patentee. In order to obtain damages, the patentee would have to file a regular
complaint or secure the relevant undertaking from the infringer.
16-09 In the Netherlands, provisional injunctions, whether granted ex parte or in short process or
“kort geding” proceedings, are often requested and granted with a penalty order attached.
The amounts are usually maximised to a specified amount in the judgment and are payable
directly to the other party, not to the state. No second set of proceedings is necessary to
determine and collect the penalty being incurred, since the execution of the penalty may take
place on the basis of the original judgment. Additional damages can also be sought but require
separate proceedings. The penalties are typically quite high in order to deter a wilful infringer
from breaching the order. Penalties can also be increased if breaches of the order do not cease.
Intermediaries
16-10 An injunction may be granted against either an alleged infringer or against “an intermediary
whose services are used by the alleged infringer”. 8 This language suggests a wider scope than
traditional contributory infringement situations under national law and, indeed, should be
considered separately from injunctions against contributory infringers. An intermediary is one
who is not itself an infringer of the patent, but in certain cases is in the best position to stop or
prevent an infringement and includes, for example, someone transporting allegedly infringing
goods on behalf of a defendant. Accordingly, an injunction against an intermediary may be
provided by the Court irrespective of the intermediary’s liability. 9
5
6
7
8
9
art.62(1) UPCA.
art.63(2) UPCA.
s.890 German Civil Procedure Code.
art.62(1) UPCA.
For further information on injunctions against intermediaries, see chapter 15 (Remedies) paragraphs 15-23 to 15-26.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 296
