4 April 2023

Remedies at the Unified Patent Court

While many of the remedies available at the UPC will be familiar to patentees, the size of the market covered by the UPC member states and subject to the jurisdiction of the UPC provides interesting opportunities for those looking to enforce their rights in Europe.

Here we provide a brief summary of the provisional and protective measures, injunctions, and final remedies available before the UPC, and discuss how parties concerned about potential infringement actions may be able to improve their position.

Provisional measures

Under Article 32(1) of the Agreement on a Unified Patent Court (UPC Agreement), the UPC has “exclusive competence” in respect of “actions for provisional and protective measures and injunctions”. These provisional measures provide interim remedies for parties, including the possibility of preliminary injunctions, and are available even before the commencement of proceedings on the merits of a case. That being said, the measures are time limited, so applicants will need to act quickly. An action leading to a decision on the merits of the case must be brought within 31 calendar days of the order (or within 20 working days, if longer). If no action is filed within that time, the measures cease to have effect and the applicant may be ordered to pay compensation.

In order to obtain a preliminary injunction or other provisional measure, the applicant will need to provide reasonable evidence to satisfy the Court that the applicant’s right is being infringed, or that infringement is imminent. Moreover, the applicant will need to provide reasonable evidence to satisfy the Court that the patent in question is valid. Useful evidence in this regard could include an indication that the patent has been maintained in European Patent Office opposition proceedings (as is sometimes used in German litigation), though the practice of the Court in regard to such evidence has yet to be established.

The Court will use its discretion in granting preliminary measures. In making its decision, the Court will weigh up the possible harm that could result to either party if the measures are granted or refused ahead of full infringement/invalidity proceedings.

It is important to note that provisional measures (including a preliminary injunction) may be ordered ex parte, i.e. without the other party having been heard. For provisional measures to be issued ex parte, the applicant will need to provide reasons for not hearing from the other party and disclose information about any prior correspondence between the parties. The applicant also needs to disclose any other pending proceedings regarding the patent and any previous, unsuccessful, attempts to obtain provisional measures.

In view of the evidentiary requirements, convincing the Court to exercise its discretion and make an ex parte order could be a high hurdle for the applicant to jump. Granting of an ex parte order is most likely to occur in instances where delay is likely to cause irreparable harm to the applicant, or where there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available. However, where an order is made ex parte, the parties affected must be given notice of the order at the time of the execution of the measures at the very latest.

In addition to preliminary injunctions, the provisional measures available at the UPC include some powerful evidence gathering measures, such as orders to produce or preserve evidence, inspections of premises, freezing orders, and the seizure of products.

In the context of provisional measures, particularly ex parte ones, the UPC also provides a protective framework for parties through the use of protective letters. Any party believing it might be the subject of an application for ex parte provisional measures can pre-emptively file (for a small fee) a protective letter with the Court giving reasons for lack of infringement and/or invalidity in the patent. In this case, if the patentee subsequently applies for an ex parte provisional measure, the expectation is that the Court will hold a hearing with both parties before making its decision on whether to grant the application for provisional measures.

Although one strategy might be to pre-emptively file protective letters on multiple patents just in case an application for provisional measures is made, it is important to note that the protective letter will be removed from the register after six months unless an application for an extension is filed and an extension fee is paid. This extension mechanism could prove costly, both financially and from an administrative standpoint, meaning protective letters are probably not a realistic tool to deploy portfolio-wide. However, in situations where there is an actual indication that another party might be intending to apply for provisional measures in Europe, parties may want to consider filing protective letters with the UPC.

Final remedies

Where a full infringement action is brought and the UPC finds infringement during the subsequent proceedings, final remedies are available to the patentee. On the flip side, if it is found that there was no infringement or threat of infringement of the patent, the patentee may be ordered to pay compensation for harm arising from any provisional measures that were granted.

The winning party may also apply for recovery of reasonable and proportionate legal costs (though recovery is subject to a sliding scale based on the value of the action and is at the discretion of the Court).

The final remedies available upon a finding of infringement include a permanent injunction and monetary damages (the calculation of which includes various factors, including whether or not the infringement occurred knowingly). The determination of damages may be subject to separate proceedings, and the winning party has one year from the date of the decision to lodge an application for the determination of damages. In addition, various other corrective measures may be ordered by the Court, such as the recall or destruction of the infringing products, and a declaration of infringement.

Although these remedies are not necessarily new, their cross-border nature is. Injunctions in respect of a European patent with unitary effect (or Unitary Patent) cover all UPC contracting states, while injunctions of a classical European patent cover all countries where that European patent has effect (i.e. all the countries in which it was validated, provided those countries are part of the UPC Agreement). Damages could also be significant, given the size of the markets under the jurisdiction of the Court. This potential for remedies with wide territorial coverage makes infringement actions at the UPC an interesting new tool for enforcement in Europe.