Proceedings before the UPC: remedies, enforcement, applicable law, language and timing

The Unified Patent Court or UPC is a new court common to the EU Member States that have signed and ratified its founding agreement. For an overview of its structure and jurisdiction, see our post here.

A.    REMEDIES

The remedies that the UPC can grant are similar to those already provided for in the Italian IP Code, even if there are some significant differences.

i)      Interim remedies

o   search

o   seizure of counterfeit goods

o   provisional injunction

o   seizure of the defendant's assets, to guarantee compensation for damages

o   (on the other hand, the Italian "stable", i.e.a potentially permanent, preliminary injunction, is not available before the UPC)

These may be granted ex parte in especially urgent cases or risk of destruction of the evidence

A deposit may be ordered against their concession; it must be ordered, except in particular circumstances, if the measures are granted ex parte

Protective letters are foreseen to protect against the risk of being subjected to an ex parte interim measure. Basically, the subject who fears being subjected to them informs the Court their reasons, contesting the validity of the patent and/or the infringement, so that the Court summons them to a hearing before ordering any measures against them. The letter is valid for 6 months and can be renewed by paying an additional fee.

ii)     Remedies at the outcome of the merits proceedings:

a.      compensation for damages, on the basis of the criteria already applied by the Italian courts, namely:

o   the patent holder’s lost profits

o   infringer’s profits

o   reasonable royalty

o   on the other hand, the Italian “restitution of profits” is not applicable before the UPC;

o   there are limits to compensation if the infringer did not commit the offense knowingly or had reasonable grounds not to be aware of the offense.

b.      withdrawal from the market and destruction of counterfeit goods;

c.       publication of the decision in the media;

d.      order that the losing party pays the legal costs.

B.    ENFORCEMENT OF THE DECISIONS

The enforcement of the decisions is regulated by the law of the State of enforcement, hence, e.g., it is on the basis of this law that the obligation to pay damages is enforced.

However, there are some prevailing rules in the UPC Agreement and in the Rules of Procedure (RoP): e.g., based on Section 63 of the Agreement and Section 354(4) RoP, in the event of a breach of the injunction, a fine must paid to the UPC, which can request it on its own initiative.

C.    APPLICABLE LAW

The cases before the UPC are decided by applying:

a)     the European Union law

b)     the UPC Agreement

c)     the European Patent Convention

d)     other international patent agreements binding on the contracting Member States;

e)     the national law (to be determined on the basis of private international law).

D.    LANGUAGE OF THE PROCEEDINGS

The language of the proceedings will vary according to the division before which action is taken, as detailed hereunder.

a.     Before the Local/Regional Divisions the following apply:

a)     official language of the relevant State; or

b)     official language of another Contracting State, if designated by the State of the competent division; or

c)     language of the patent:

i)               if the panel of judges deems it appropriate, with the prior agreement of the parties

ii)              if the parties request it and the judging panel accepts the request (if the panel does not accept, the parties can request that the matter be referred to the central division)

iii)             at the request of a single party, having heard the panel, by the president of the court if it appears appropriate for reasons of equity.

b.     Before the Central Division the language of the patent applies.

c.     Before the Court of Appeal the following apply:

a)     language of the first instance proceedings; or

b)     language of the patent, upon agreement of the parties; or

c)     in exceptional cases, with the agreement of the parties, the Court may decide to use the official language of another Contracting State.

E.    TIMING

According to the timescales indicated in the RoP, first instance proceedings on the merits should take 12-14 months.

Given this expected time frame, it is believed that, in order to obtain precautionary measures, it will be necessary to act within 3 months of the discovery of the offence, otherwise the risk of suffering irreparable damages pending the decision on the merits will be considered to be lacking.

[Last updated: July 2023]