A guide to the UPC and the UP - Flipbook - Page 387
19-29 In the absence of a specific treaty that recognises a foreign judgment, enforcement will not
be straightforward. 40 The normal means of enforcing a foreign order in countries, such as the
United States, is to bring separate proceedings for summary judgment on the basis that there
can be no defence to complying with the order. However, the defendant can prolong such
proceedings by filing a defence based on local laws.
“Long-arm jurisdiction” cases
19-30 There are certain instances where, if the Court already has jurisdiction over a non-EU
defendant for infringement of a European or Unitary patent giving rise to damage within the
EU, 41 it can also exercise jurisdiction in relation to damage arising outside the EU from such
an infringement. 42 This is the so-called “long-arm jurisdiction”. Such jurisdiction may only be
established if property belonging to the defendant is located in a Contracting Member State
and the dispute has a sufficient connection with such Member State. 43 When exercising such
jurisdiction, the Court should have regard to the value of the property belonging to the
defendant. 44 It should not be insignificant and should be such as to make it possible to enforce
the judgment, at least in part, in a Contracting Member State.
19-31 The upshot of this provision is that enforcement of the Court’s decision or order will be easy in
such cases since assets, at least to a certain value, will be located in the jurisdiction of the Court.
Issues of enforcement in third states outside the EU are therefore avoided and it matters not if
those states choose not to recognise the jurisdiction of the Court.
Indirect Enforcement
19-32 The Court has broad powers of indirect means for enforcing its decision and orders. The most
obvious way in which the Court can indirectly influence a party into complying with its order is
to attach a periodic penalty payment to it. However, the Court can also make interim awards of
costs as one of the provisional measures that it can order. Such interim cost orders are
discussed in chapter 16. 45 Whether these will be used by the Court as a way to seek
compliance with its orders remains to be seen.
Penalty Payments
19-33 Decisions and orders 46 of the Court may provide for recurring or periodic penalty payments
in the event that a party fails to comply with the terms of the order or an earlier order. 47
The reference to “an earlier order” in r.354(3) RoP, suggests that it will be open to a party who
wishes to enforce a first order to ask the Court for a second order, requiring that the party in
breach of the first order makes periodic penalty payments notwithstanding that this was not
provided for in the first order (or indeed to increase the amount of an earlier ordered penalty).
This is consistent with r.354(4) RoP, which provides that on the request of the other party or
on the Court’s own motion, a penalty payment may be provided for in the order if a party has
failed to comply with its terms. Where a party fails to comply with the terms of an order,
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44
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The EU deposited its instrument of accession to the Hague Convention of 2019 on the Recognition and Enforcement of
Foreign Judgments in Civil and Commercial Matters on 29 August 2022 and the Convention will enter into force for the EU and
its Member States as at 1 September 2023. As yet the only other country to have ratified the Convention is Ukraine, but the
UK is consulting with a view to acceding. However, art 2 of the Convention excludes intellectual property from its scope.
art.71b(2) Brussels I Regulation.
art.71b(3) Brussels I Regulation.
See chapter 6 (Jurisdiction, Competence and Forum Shopping) paragraphs 6-31 to 6-38.
Recital 7 Regulation (EU) No. 542/2014.
See chapter 16 (Provisional and Protective Measures) paragraph 16-19.
There would not appear to be any practical significance in the reference to both “decisions” and “orders” as any decision
of the Court should have an order appended to it for its enforcement (art.82(1) UPCA and r.350(2) RoP).
arts 63(2) and 82(4) UPCA and r.354(3) RoP. The UPCA uses the word “recurring” whereas the RoP uses the word “periodic”.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 377
