UPC decisions, and orders such as those discussed here, may be enforced across several countries. In cases relating to unitary patents, decisions and orders may be enforceable across all 17 contracting member states constituting the current territory covered by the UPC. In cases relating to traditional (non-unitary) European patents, decisions and orders may be enforceable in the contracting member states in which the validation has been performed (up to the full 17 contracting states). Various key aspects of the enforcement process are discussed below.
What law governs enforcement procedures?
Generally speaking, national law. A.82(3) of the UPC Agreement (UPCA) states that, without prejudice to the UPCA and the statute, “enforcement procedures
shall be governed by the law of the Contracting Member State where the enforcement takes place”. Accordingly, unless directly contradicted by the UPCA, national law will govern enforcement.
Is provision of security required to enforce a decision?
In some instances, yes. A.82(2) UPCA states that enforcement may be “subject to the provision of security or an equivalent assurance to ensure compensation for any damage suffered”. This is particularly the case where the enforcement includes injunctions. The exact circumstances under which the UPC may or may not require security are yet to be settled. Where security is required, this may be provided in the form of a deposit, bank guarantee or “otherwise” (see R.352(1) of the UPC Rules of Procedure, RoP). Further, if a decision or order requires provision of security, the decision or order is not enforceable until said security has been provided and the decision or order has been served. For some orders, continuation of the order may be subject to the provision of ongoing security (to provide compensation in the event that the order is subsequently revoked).
A decision/order has been made against me, what can I do?
You may be able to appeal. Appeals will not, generally speaking, have a suspensive effect so it would be necessary to comply with the decision or order in the interim period. It is possible to request that suspensive effect for an appeal (see A.74 UPCA), the Court of Appeal will then determine whether a suspensive effect is to be applied. The exception, as covered in A.74(2) UPCA, is appeals against decisions on actions or counterclaims for revocation, and on certain administrative actions; these appeals do have a suspensive effect by default.
What if the decision/order was by default?
Decisions by default may be issued in cases where a party to an action does not file documents when required, or fails to appear at an oral hearing. Within one month of being notified of the decision by default, the party may file an objection requesting that the decision be set aside. Similarly to the case of appeals, the objection will not have a suspensive effect by default, but the UPC may grant a stay of enforcement until it has decided on the objection. Decisions by default are covered in A.37 UPCA.
What if I don’t comply with the decision/order?
Then you may be subject to penalty payments, if the decision or order included a provision for such payments. The imposition of penalty payments may be made at the request of the other party in the dispute, however the court may also impose penalty payments of its own motion. A.82(4) UPCA states that the penalty “shall be proportionate to the importance of the order to be enforced and shall be without prejudice to the party’s right to claim damages or security”. The practice of the courts with regard to penalty payments has yet to be established, there appears to be a certain degree of flexibility available to the court to impose penalty payments on a per day basis or per infringing item sold basis, for example.
I successfully appealed the decision/order, or the final decision in a case in which the order was made was in my favour; can I apply for compensation?
Yes. For some provisional measures, specific articles within the UPCA cover the awarding of compensation; A.60(9), A.61(2) and A.62(5) UPCA cover the awarding of compensation for damages suffered as a result of saisie (preservation of evidence) orders, freezing orders and interim injunctions respectively. For other cases, R.354(2) of the RoP provides that compensation may be awarded for injury caused by the enforcement of a decision or order. One further point to note is that, if a decision or order was made pursuant to a finding of patent infringement, and after the conclusion of the action the patent is amended or revoked, the party subject to the decision or order may request that the decision or order no longer be enforceable.