A guide to the UPC and the UP - Flipbook - Page 381
Introduction
19-01 Once a decision or order of the Court has been issued, it is important to distinguish
between its execution on one hand and its enforcement on the other. A decision or order
can be executed on a party on a voluntary basis, for instance upon written invitation by the
other party. The party who accepts can do so without prejudice to its right to lodge an appeal
against the decision or order and may be able to seek compensation should it later be revoked
or set aside (although it should be noted that in some Contracting Member States, such as
the Netherlands, voluntarily complying with a decision or order, especially an order for
an injunction, may deprive a party of the ability to claim compensation).
19-02 This chapter deals with the situation where a party is unwilling to comply with a decision or
order on a voluntary basis, so that enforcement becomes necessary. The Court can seek to
enforce its orders through attaching periodic penalty payments to them and, therefore,
indirectly seek to ensure compliance. Alternatively, the Court can enforce its orders directly
against the defendant, although it cannot do so itself, and has to work through national courts
and enforcement authorities. This is straightforward in a Contracting Member State as the
Court is a court common to the Contracting Member States and is part of their judicial system 1
and its orders are enforced under the same conditions as a decision given in the State where
the enforcement takes place. 2 Outside the Contracting Member States, the Court’s decisions
will be regarded as judgments from a national court and will, with regard to enforcement in
Member States which are not a party to the UPCA, be enforced in accordance with the Brussels
I Regulation (recast) or, in other countries, be enforced via other international treaties dealing
with recognition of foreign judgments, such as the Lugano Convention. This chapter considers
how the Court’s orders are enforced and then considers indirect enforcement through
penalty payments.
19-03 Before an order can be enforced, the Court may attach conditions to it. 3 Where appropriate,
the Court may order that the claimant provides security before the order is enforceable to
ensure compensation for any damage suffered by the enforcement. 4 The final section in
this chapter considers the requirement for a security deposit.
Direct Enforcement
Enforcing Orders within Contracting Member States
19-04 Art.82 UPCA provides that decisions and orders of the Court are enforceable in any Contracting
Member State. 5 It also provides that “without prejudice to [the UPCA]” enforcement procedures
shall be governed by the law of the Contracting Member State where the enforcement takes
place. 6 In other words, the enforcement procedures in the UPCA are first applied, then the
procedures from the sources of law in art.24(1) UPCA 7 and only so far as they do not contain
provisions on enforcement, does the law of the relevant Contracting Member State apply.
Although the Brussels I Regulation (recast) contains provisions on enforcement which should, in
this hierarchy, be considered before national law, art.71d Brussels I Regulation (recast) provides
that where recognition and enforcement of a judgment given by the Court is sought in a
Contracting Member State, the rules of the UPCA shall apply instead of the rules of the Brussels
I Regulation (recast). Therefore, where a decision of the Court needs to be enforced in a
1
2
3
4
5
6
7
art.21 UPCA.
art.82(3) UPCA.
art.56(1) UPCA.
art.82(2) UPCA.
art.82(1) UPCA.
art.82(3) UPCA.
In descending order: EU law (which includes the Brussels I Regulation (recast)), the UPCA, the EPC, international agreements
applicable to patents and binding in all Contracting Member States and national law.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 371
