A guide to the UPC and the UP - Flipbook - Page 395
19-66 R.354(2) RoP also covers the situation where an action has been concluded. It makes specific
reference to an enforceable decision or order that has been made pursuant to a finding of
infringement and, following the conclusion of the action, the patent is amended, such that it is
no longer infringed, or it is revoked. In such an event, the party against whom the decision or
order would have been enforceable, but for the amendment or the revocation, may apply for
an order stating that the original order ceases to be enforceable.
19-67 R.354(2) RoP seems to distinguish between the consequences of a decision or order being
nullified following the conclusion of an action and during an action. In relation to the latter,
the rule states that a request for compensation can be brought 92 whereas there is no such
mention in relation to the former. Instead, the order is said to be unenforceable.
Calculation of Compensation
19-68 R.354(2) RoP states that the Court may order the party which has enforced the decision
or order, on the request of the other party, to pay “appropriate compensation for any
injury caused by the enforcement”. 93
19-69 The term “appropriate compensation” is derived from art.9(7) Enforcement Directive. 94
The difference in wording in the Enforcement Directive between art.9 (appropriate
compensation, dédommagement approprié, passende schadeloosstelling, angemessenen
Ersatz) on the one hand and art.13 (damages, dommages et interest, schadevergoeding,
Schadenersatz) on the other hand, suggests that the Court has the discretion to assess
the compensation due to the defendant for wrongful enforcement of the injunction.
19-70 The appropriate compensation that can be claimed by the defendant is for “any injury caused
by the enforcement”. This indicates that a defendant’s claim to compensation can cover both
damages sufficient to put it back in the same position it would have been had the injunction not
been enforced, and legal costs and other expenses. 95 R.354(2) RoP states that r.125 RoP on the
procedure for the determination of damages applies mutatis mutandis. 96 The appropriate
compensation may also include interest at a rate and for a period decided by the Court.
The procedure for claiming legal costs is not specifically mentioned in r.354(2) RoP, but
where costs are owing, the cost decision procedure in r.150 RoP will be followed. 97
19-71 The burden is on the defendant to prove the loss suffered and it is therefore advisable for a
defendant to keep track of and document any costs and other financial harm incurred through
compliance with an enforcement decision that is not yet final. However, the Court has the
discretion to award what it considers to be appropriate in all the circumstances and will expect
a defendant to take steps where reasonable to avoid or reduce the losses it suffers and,
where a defendant does not do so, to that extent not all its losses will be compensated.
92
93
94
95
96
97
In commentary on the 15th draft of the RoP, it was stated that the Court will almost certainly order a security and likened the
non-final nature of the decision to that of a provisional injunction.
art.60(9) UPCA uses the expression “appropriate compensation for any damage suffered”, but no difference appears to be
meant.
Under art. 9(7) Enforcement Directive there is however considerable latitude as to what constitutes “appropriate
compensation”, as shown by the only guidance as to it so far provided as to from the CJEU, in Bayer Pharma AG v Richter
Gedeon Vegyészeti Gyár Nyrt.,Exeltis Magyarország Gyógyszerkereskedelmi Kft (C-688/17) ECLI:EU:C:2019:722, holding that it was
not necessarily inconsistent with art. 9(7) not to make an order for provisional measures against the applicant obliging it to
provide compensation for losses caused by those measures even though the patent on the basis of which those measures
had been requested and granted had subsequently been found to be invalid,
r.354(2) RoP does not refer to legal costs and expenses, but r.352(1) RoP does.
See chapter 15 (Remedies) paragraphs 15-60 to 15-76.
See chapter 20 (Court Fees and Recoverable Costs) paragraphs 20-96 to 20-102.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 385
