UPC: Enforcement possibilities for right holders
The UPC system offers a variety of enforcement measures, including the issuance of preliminary and permanent injunctions, damage awards and orders to render information and account. The following provides for a short overview of some o these available measures:
Where there is infringement, and where the patent is found to be valid, the UPC will have the competence to grant a permanent injunction, which (in the case of a Unitary Patent) then covers the territory of all UPC member states at the time the Unitary Patent has been granted. In case of a bundle (EP) patent, which has not been opted-out of the system, the injunction will have a more limited effect, namely in those countries, where the EP patent has been validated and maintained. Unlike in some EU states, such as Germany, the UPC are likely to exercise some limited discretion whether to grant an injunction in each individual case, in particular with regard to the principles of proportionality. There likely will be differences between the local divisions as to what extent such discretion will be applied, so that forum shopping is likely to be driven by this factor, at least in the initial phase of the system.
The UPC can grant the possibility to provisionally enforce the injunction even while an appeal is still pending. For this, the UPC may order a security to be provided by the right holder prior to enforcement of any parts of the first instance decision, including the injunction. In any case, a preliminary enforcement will subject the right holder to possible damage claims, if the decision is later revoked on appeal.
2. Damage Claims
While the availability of an injunction will likely lead to many settlements, which may include damages, after a successful trial, the UPC also has the competence to grant damage claims and to set out a damage award that covers all sales in the territory of all UPC member states.
The UPC has the possibility to decide on infringement and damages in the same judgement, or to rule on damages at a later stage, either based on the parties’ submissions, or after defendant has laid open its books. Damages will be oriented at economic factors such as lost profit and unfair profits made by infringer, but also other factors such as the moral prejudice cased to the injured party by the infringement. It can be expected that an appropriate royalty payment, set out as a lump sum for the past infringing use, will be the most common method of calculation.
3. Evidence Proceedings
The UPC agreements stipulate that a party alleging a statement of fact that is contested by the other party, must produce available evidence. Conversely, a statement of fact that is not specifically contested by any party shall be held to be true as between the parties. To bring the necessary evidence, the UPC allows for a large variety of means, including a hearing of the parties and/or witnesses, requests for information, production of documents, opinions by experts, inspections, comparative tests or experiments and affidavits.
While it is generally upon the parties to obtain and produce the required evidence, the UPC may order the adverse party or a third party to produce evidence, provided that evidence lies in the control of the other party or third party and that their confidentiality interests are acknowledged and safeguarded.
The UPC may also issue an order to inspect premises and to gather evidence. Such measures may include the physical seizure of the infringing products, and, in appropriate cases, the materials used in the production and/or the distribution of those products and the documents relating thereto as well as the inspection of premises. To obtain such order, the right holder has to present reasonably available evidence to support its infringement claim. In order to guarantee the full effectiveness of this measure, and if necessary, the order can be obtained ex-parte (i.e. without hearing the other party first).
4. Provisional Measures
The UPC may grant provisional injunctions to prevent any imminent infringement or to prohibit the continuation of an alleged infringement. The UPC may also order seizure or delivery up of allegedly infringing products and precautionary seizure of the alleged infringer’s property.
To grant any such measures, the UPC may require the right holder to furnish reasonable evidence to demonstrate with a reasonable degree of certainty that the patent is valid and infringed. It is not clear yet, whether the UPC will apply a presumption of validity or what is required to rebut such presumption. In general, the UPC will weigh up the interests of the parties prior to granting or refusing injunctions and will deny the measure if there is unreasonable delay in seeking the provisional measures.
The UPC may invite the defendant to object to the application for provisional measures and it may hold an oral hearing to which it may summon either both parties or only the applicant. If necessary, and particularly where any delay is likely to cause irreparable harm, the UPC may also order provisional and protective measures ex parte, i.e. without hearing the defendant. If the UPC rejects ex parte measures, the applicant may withdraw the application and request that it remains confidential. To mitigate the risk of ex parte measures, defendant may file a protective letter. A protective letter is valid for an extendable period of 6 months and shall be forwarded to the panel or judge appointed to decide on provisional measures in relation to the patent covered by the protective letter.