Unified Patent Court procedure, remedies and fees
In summary, the procedure comprises a Written Procedure, in which the parties submit statements of case, an Interim Procedure in which preparations for trial are made, and an Oral Procedure. The rules include hard deadlines for the steps of the Written Procedure including just 3 months for filing a defence to an infringement action and a counterclaim for revocation, and 2 months for filing a reply to the defence and a defence to the counterclaim for revocation. The rules envisage that the first instance procedure should be completed in 12 to 15 months, with a similar period allowed for the appeal.
Final Orders Obtainable
The UPC will be able to order the revocation of a patent, either entirely or partly.
In infringement proceedings the court may order an injunction against the infringer aimed at prohibiting the continuation of the infringement. The court may also grant an injunction against an intermediary providing services being used by a third party to infringe a patent. In addition, the court may order that infringing products, at the expense of the infringer, be:
- recalled from channels of commerce;
- deprived of their infringing property; or
- destroyed, together with materials and implements used to produce the products.
Further, the UPC will be able to order an infringer to pay damages to compensate the patentee (or exclusive licensee) for losses suffered as a result of the infringement. Damages will be compensatory, not punitive. The patentee’s lost profit, unfair profits made by the infringer and non-economic factors such as moral prejudice can be taken into account when assessing the level of damages payable. An infringer can avoid paying damages if he can demonstrate that he did not know, and had no reasonable grounds to know, that he was infringing the patent, although payment of compensation or the recovery of profits may still be ordered.
Interim Orders Obtainable
A variety of interim orders will be available.
Interim injunction: The court may order an alleged infringer to cease, or not to commence, activities said to infringe a patent while the issue of liability is considered.
Disclosure of evidence: If a party presents reasonable evidence sufficient to support its claims that necessary documents or information (relating either to liability or to quantum of damages or to the validity of the patent) is in the control of the opposing party or a third party then the court may order that other party to disclose the relevant material, with measures being available to protect confidential information.
Evidence preservation: The court may, before commencement of proceedings on the merits of the case, order ex parte measures (inspecting premises, taking samples, seizing products, materials and implements used in the production and/or distribution of those products and documents relating thereto) to preserve relevant evidence in respect of the alleged infringement. These orders may be subject to a bond, and an applicant seeking such an order may have to compensate a defendant for damage suffered as a result of an evidence preservation order if it is subsequently found that there was no infringement or if the applicant fails to pursue the case.
Other Types of Order
The court may order a party not to remove from its jurisdiction any assets located therein, or not to deal in any assets, whether located in its jurisdiction or not. It is likely that these interim orders will require a further order by the national court of the relevant country to enforce.
The court may order an infringer, or in certain circumstances a third party, to disclose:
- the origin and distribution channels of the infringing products or processes;
- the quantities produced, manufactured, delivered, received or ordered as well as the price obtained for the infringing products; and
- the identity of any third person involved in the production or distribution of the infringing products or the use of any infringing process.
Evidence and the Burden of Proof
As usual in civil litigation, any party seeking to rely on a fact has the burden of proving it and may rely on witnesses, experts, inspection, experiments or comparative tests, affidavits, documents, requests for information, and party submissions. The UPC agreement gives no indication as to the relative weight of each of those types of evidence.
The burden of proof can be reversed if the subject matter of the patent is a process for obtaining a new product, and the infringing product is identical to the product produced by the patented process.
The court may appoint court experts to provide expertise for specific aspects of the case. There will be a list of approved experts kept by the Registrar to guarantee independence and impartiality.
The UPC agreement states that reasonable and proportionate legal costs and other expenses incurred by the successful party shall as a general rule be borne by the unsuccessful party. A separate publication has specified the levels of recoverable costs and further information relating to that can be found here.
Enforcement of Orders
Enforcement proceedings shall be governed by the law of the participating country where the enforcement takes place.
The UPC can sanction non-compliant parties with a recurring penalty proportionate to the importance of the order to be enforced.
Arbitration and Mediation
A patent mediation and arbitration centre will be established in Ljubljana and Lisbon, and a list of mediators and arbitrators drawn up.
Parties Entitled to Bring an Infringement Action
The patent proprietor will be entitled to bring infringement actions. An exclusive licensee may bring an infringement action as long as the licence agreement does not prohibit it, and it gives prior notice to the proprietor. A non-exclusive licensee may bring an infringement action if the licence agreement expressly permits it, and it gives the proprietor prior notice.