A guide to the UPC and the UP - Flipbook - Page 405
20-17 In infringement actions and actions for compensation for licences of right, the Guidelines state
that the value of the action should be based on a royalty calculation as follows:
–
The defendant’s turnover in the alleged infringing product for the future up to the expiry of
the patent (injunction claim) and the past (damage claim) should be calculated based upon
the known existing turnover of the defendant or, if not known or not yet existent, the
market share the defendant has taken and/or may reasonably be assumed to take;
–
A royalty rate should be applied based upon:
–
The existing royalty rate for the same invention charged by the claimant;
–
The generally accepted industry rate for the type of invention in question; or
–
A royalty rate determined by the Court after hearing the parties.
20-18 Where the claim is limited to awarding damages in principle, it should be reduced by 50 per
cent, but where the claimant specifies the amount of the damages, the value should correspond
to the amount claimed. 34
20-19 In an application for the determination of damages (including the laying open of books), 35 the
value of the application should correspond to the amount of damages claimed. If no such sum
is specified, the value is calculated as described above. 36
20-20 The same method is also used to calculate the value of actions of compensation for a licence
of right and in an application for a DNI. In relation to the latter, the turnover of the claimant will
presumably be taken into account. Although the RoP only require a claimant to give “an
indication of value” in the statement for a DNI, 37 a claimant may be obliged to disclose its own
turnover together with an estimate of the applicable royalty rate that it wishes to avoid by
bringing the declaratory action if the matter is disputed by the defendant. 38
Multiple Parties/Patents
20-21 If the action has more than one claimant and/or more than one defendant or if it concerns a
plurality of patents, one fixed fee and, if applicable, one value-based fee is payable. 39 As to the
calculation of the value-based fee, where there is more than one defendant or more than one
patent, the value of the action should be calculated on the basis of a combined licence for all
patents and all defendants across all territories covered by the patents. 40
20-22 Where the Court decides to order a separation of proceedings where there are a plurality of
claimants or a plurality of patents, the Court will decide on the payment of a new Court fee or
fees. 41 Where the Court orders the separation of proceedings which have been commenced
against a plurality of defendants, the rules are expressed more strongly; the claimants in the
new proceedings will pay a new Court fee unless the Court decides otherwise. 42
34
35
36
37
38
39
40
41
42
para.II.1.a)(3) Guidelines.
See chapter 15 (Remedies).
para.II.1.a)(4) Guidelines.
r.63(i) RoP.
See paragraphs 20-23 to 20-27 for the procedure for setting the value-based fee.
r.370(7) RoP.
para. II.1.a)(5) Guidelines.
r.302(2) RoP.
r.303(3) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 395
