A guide to the UPC and the UP - Flipbook - Page 392
Applying for an Order to be Subject to Security
19-51 The Court may decide of its own motion whether to subject an order to a requirement to
provide security. 73 Whilst the RoP sets out the procedure under which a party can request that
the Court order the other party to provide security for legal costs and other expenses, 74 there is
no procedure specified for doing so where orders are made subject to the rendering of security
before they are binding. However, unless the order was being made on an ex parte basis, it is
unlikely that the Court would make an order subject to security without a request being made
by the defendant. 75 Only the defendant will know the loss it is likely to suffer due to the
enforcement of the order against it; this will not be within the Court’s knowledge, nor will the
Court be aware of the financial position of the successful claimant unless it is provided with
evidence. Although the actual procedure will have to be worked out, the Court will, no doubt,
allow both the parties an opportunity to be heard. 76
When will a Security be Ordered?
19-52 As the RoP are silent on the test to be applied as to when security will be ordered, it is
suggested that the Court’s starting position will be that its decisions and orders should be
enforced. Despite the very wide discretion the Court undoubtedly has, it is also suggested that
the Court should not take into consideration the chances of the decision being overturned on
appeal or, if the issue is one of the enforcement of an injunction, the chances of the patent
being revoked. The issue is purely one of ensuring that the defendant, so far as is possible, is
put back in the position it would have been had the order not been enforced against it; this
being done by the claimant providing appropriate compensation for the injury caused to the
defendant. If this is correct, an unsuccessful defendant would have to show that it will suffer
damage if the order is enforced and later reversed, and that, for example:
– There is reason to believe that the successful claimant would be unable to compensate the
defendant for the damage caused by enforcement of the order; or
– The successful claimant has its place of business outside the EU and has no, or no
significant, assets in the EU, as a result of which it will be difficult for the defendant to
enforce any award of compensation against the claimant.
19-53 The RoP do not distinguish between the ordering of security in relation to provisional measures
and orders following a decision on the merits. They also state that compensation will be
payable to the defendant if either such order is reversed. 77 It is therefore suggested that no
distinction should be made by the Court between provisional orders and orders made on the
merits when considering whether to order security before they become binding despite the fact
that in some national courts such a distinction is made.
Extent of the Security
19-54 If the Court decides to subject the order to the giving of security, it will have to assess the sum.
The general rule in art.82(2) UPCA refers to “compensation for any damage suffered”.
This is reflected in the specific provisions relating to saisies where art.60(7) UPCA refers
to “any prejudice suffered by the defendant” which, by reference to art.60(9) UPCA, covers
“appropriate compensation for any damage suffered”. But security can also be ordered to
73
74
75
76
77
art.56(1) UPCA and r.118(8) RoP. This is similar to the position in Germany in which the court demands security from the
claimant, at least before a provisional measure is granted.
r.158 RoP.
The defendant is entitled to make such a request in relation to costs and other expenses (art.69(4) UPCA).
art.56(2) UPCA. See also r.158(2) RoP which might apply by analogy.
In relation to provisional injunctions, see art.60(9) UPCA and r.213(2) RoP referring to r.354(2) RoP. In relation to injunctions
following a decision on the merits, see r.354(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 382
