european unified patent court part 3 thomas gniadek

UNIFIED PATENT COURT& UNITARY PATENT

PART 3

Dr. Thomas Gniadek

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TABLE OF CONTENTSI. STRUCTURE OF PROCEEDINGS

II. BIFURCATION

III. PRESERVATION OF EVIDENCE

IV. REMEDIES

1. Injunction

2. Preliminary Injunction

3. Corrective Measures

4. Damages

5. Communication of Information

V. COSTS

1. Court Fees, Art. 36 (3) UPCA

2. Cost Reimbursement

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I. STRUCTURE OF PROCEEDINGS1. Overview (Art. 52 (1) UPCA)

Written procedure(RoP 12-98)

• front loaded• exchange of briefs (in electronic form, RoP 4)• duration: 8 to 9 months

Interim procedure(RoP 101-110)

• directed by judge-rapporteur• interim conference (optional)• preparation of the oral hearing• duration: not longer than three months

(RoP 101)

Oral procedure(RoP 111-119)

• oral hearing held before the panel• duration of the oral hearing: one day (RoP 113)• decision on the merits: (in writing) not longer

than 6 weeks after the oral hearing

Estimated total duration:

one year!

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I. STRUCTURE OF PROCEEDINGS2. Infringement Proceedings

3 months

• Statement of claim (RoP 13): all facts needed, evidence relied on + arguments of law

2 months

• Statement of defence (RoP 23, 24): facts relied on• Counterclaim for revocation (RoP 25): grounds fR + evidence

2 months

• Reply to the Statement of defence (RoP 29 (a))• Defence to the Counterclaim (RoP 29 (a))

1 months

• Rejoinder to the Reply to the Statement of defence (RoP 29 (d))

• Reply to the Defence to the Counterclaim (RoP 29 (d))

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I. STRUCTURE OF PROCEEDINGS2. Infringement Proceedings

3 months• Interim Procedure: case management

1 day• Oral hearing: oral submissions + expert witness (optional)

6 weeks• Decision on the merits: oral (asap) + reasons in writing (6 w)

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I. STRUCTURE OF PROCEEDINGS3. Interim procedure (RoP 101-110) / Judge-Rapporteur Purpose of the interim procedure:

‒ RoP 101: „preparations for the oral hearing“‒ give directions + identify relevant issues

Purpose of the interim conference (held by judge-rapporteur):‒ RoP 103, 104: order to clarify issues, order to produce evidence; order to lodge

documents; discussion of settlement?‒ excludes issue (RoP 334)‒ decide on value-in-dispute‒ Art. 52 (2) UPCA: the judge „[…] shall in particular explore with the parties the

possibility for a settlement, including through mediation, and/or arbitration, by using the facilities of the Centre […].“

RoP 105: Interim conference should be held by telephone conference or video conference

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II. BIFURCATION (Art. 33 (3) UPCA)

What is bifurcation? Germany: bifurcation

‒ dealing with infringement and validity in separate proceedings;‒ infringement proceedings may only be stayed at the discretion of infringement

court if it sees high likelihood of revocation in pending nullity action‒ injunction provisionally einforceable

“injunction gap”

UPC: If counterclaim for revocation is raised before local or regional division, it has the discretion either to‒ proceed with both the infringement action and the counterclaim for revocation (in

such case it will request the allocation of a further technically qualified judge)‒ refer the counterclaim for revocation to the central division (in such case it has the

discretion to stay infringement proceedings or not)‒ with the agreement of the parties, refer the whole case to the central division

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II. BIFURCATION (Art. 33 (3) UPCA)

Counterclaim for revocation

„discretion“(Art. 33 (3) UPCA)

proceed with both(Art. 33 (3)(a) UPCA)

refer the counterclaim stay or not

(Art. 33 (3)(b) UPCA)

refer the casestay or not

(Art. 33 (3)(c) UPCA)

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III. PRESERVATION OF EVIDENCE1. Principles Is there discovery? No! However:

means for preservation of evidence and inspection of premises (search order)

Art. 60 (1) UPCA:‒ “reasonably available evidence to support the claim that the patent has been

infringed or is about to be infringed”‒ “even before the commencement of proceedings on the merits of the case”‒ Court may order “prompt and effective provisional measures to preserve relevant

evidence in respect of the alleged infringement”‒ “subject to the protection of confidential information.”

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III. PRESERVATION OF EVIDENCE2. Requirements Art. 60 (1) UPCA:

‒ “reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed”

RoP 196:‒ (optional) security to be provided by applicant

RoP 197: ‒ “The Court may order measures to preserve evidence without the defendant

having been heard, in particular‒ where any 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.” Order to preserve evidence possible

‒ prior to the proceedings on the merits‒ during the proceedings on the merits

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III. PRESERVATION OF EVIDENCE3. content of order

RoP 196 (1): Court may order

a) preserving evidence by detailed description, with or without the taking of samples

b) physical seizure of allegedly infringing goods

c) physical seizure of the materials and implements used in the production and/or distribution of these goods and any related document

d) the preservation and disclosure of digital media and data and the disclosure od any password necessary to access them

Further, Art. 60 (3) UPCA, RoP 199: inspection of premises

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III. PRESERVATION OF EVIDENCE4. possible consequences

If applicant does not bring action leading to a decision on the merits of the case before the Court within 31 calendar days or 20 working days (whichever is longer), the measures to preserve evidence shall be revoked (Art. 60 (8) UPCA).

In case of revocation, lapse or non-infringement / no threat of infringement, Court may order the applicant to compensate any damage of the defendant which resulted of the measures to preserve evidence (Art. 60 (9) UPCA).

(both subject to defendant’s request)

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IV. REMEDIES1. Injunction Art. 63 (1) UPCA: „Where a decision is taken finding an infringement the Court “may”

grant an injunction […]“

unclear: power to grant or discretion?

Art 56 (2) UPCA: „The Court shall take due account of the interest of the parties […]“

Art. 63 (2) UPCA: penalty payment in case ofnon-compliance with the injunction (where appropriate)

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IV. REMEDIES2. Preliminary Injunction RoP 205 et seq.: Provisional measures

‒ Court may, subject to an Application for provisional measures (RoP 206), order provisional measures (RoP 211)

‒ Provisional measure can inter alia be an injunction against a defendant (RoP 211)

RoP 209: Court shall “take into account” “the urgency of the action”?

RoP 212: “The Court may order provisional measures without the defendant having been heard, in particular ‒ where any delay is likely to cause irreparable harm to the applicant or ‒ where there is a demonstrable risk of evidence being destroyed.”

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IV. REMEDIES3. Corrective Measures Art. 64 (1) UPCA: „Without prejudice to any damages due to the injured party by reason

of the infringement, and without compensation of any sort, the Court may order, at the request of the applicant, that appropriate measures be taken with regard to products found to be infringing a patent and, in appropriate cases, with regard to materials and implements principally used in the creation or manufacture of those products.“

Art. 64 (2) UPCA: „Such measures shall include

a) a declaration of infringement;

b) recalling the products from the channels of commerce;

c) depriving the product of its infringing property;

d) definitively removing the products from the channels of commerce; or

e) the destruction of the products and/or of the materials concerned.“

Art. 80 UPCA: publication of the judgment

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IV. REMEDIES4. Damages RoP 118: „In addition to the orders and measures and without the prejudice to the

discretion of the Court referred to in Articles 63, 64, 67 and 80 of the Agreement the Court may, if requested, order the payment of damages or compensation according to Articles 68 and 32(1)(f) of the Agreement.”

Art. 68 (1) UPCA: „The Court shall, at the request of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in a patent infringing activity, to pay the injured party ‒ damages appropriate to the harm actually suffered by that party as a result of the

infringement.”

Art. 68 (4) UPCA: in case infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity‒ recovery of profits‒ payment of compensation

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IV. REMEDIES4. Damages Art. 68 (2) UPCA: extent of damages

‒ injured party shall be placed in the position it would have been in if no infringement had taken place

‒ infringer shall not benefit from the infringement‒ damages shall not be punitive

Art. 68 (3) UPCA: two alternatives for determining the amount of damages

a) take into account all appropriate aspects, such as injured party’s lost profits, infringer’s unfair profits and (in appropriate cases) moral prejudice caused to the injured party by the infringer

b) set the damages as a lump sum which should at least correspond to a royalty amount of damages can be stated in the order (RoP 118) or determined in separate

proceedings (RoP 125-144)‒ RoP 126: successful party shall lodge an Application for the determination of

damages no later than one year from service of the final decision on the merits‒ RoP 126: Application may include a request for an order to lay open books

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IV. REMEDIES5. Communication of Information Art. 67 UPCA: Court may order the communication of information in response to a

justified and proportionate request of the applicant

Art. 67 (1) UPCA: information to be communicated by the infringer

a) the origin and distribution channels of the infringing products or processes

b) the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products

c) the identity of any third person involved in the production or distribution of the infringing products or in the use of the infringing products

Further, Order to lay open books: RoP 144‒ subject to a request to lay open books pursuant to RoP 141

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IV. REMEDIES5. Communication of Information Art. 67 (2) UPCA: Court may order any third party to provide information in the

meaning of Art. 67 (1) UPCA, if the third party

a) was found in the possession of the infringing products on a commercial scale or to be using an infringing process on a commercial scale

b) was found to be providing on a commercial scale services used in infringing activities

c) was otherwise involved in the infringement or provision of services

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V. COSTSTotal Cost Risk

Court Fees

Own Attorney Fees ‒ billed by hour‒ in Germany: contingency fees not permissible

Cost Reimbursement‒ you get cost reimbursement if you win‒ you pay cost reimbursement if you loose

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V. COSTS1. Court Fees, Art. 36 (3) UPCA

Art. 70 UPCA: court fees shall be paid by the parties

On May 8, 2015, the Preparatory Committee published a Consultation Document with a draft proposal for court fees and recoverable costs:‒ RoP 370: fixed fee for certain infringement actions plus a value-based fee for

actions exceeding a value of EUR 500k‒ RoP 370: fixed fee i.a. for revocation action with no additional value-based fee‒ draft table of fees to be adopted by Administrative Committe (Art. 36 (3) UPCA)

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Fixed fees

Action Fixed fee

Infringement action EUR 11,000

Action for declaration of non-infringement EUR 11,000

Application to determine damages EUR 3,000

Appeal pursuant to Rule 220.1 (a) and (b) EUR 16,000

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V. COSTS1. Court Fees, Art. 36 (3) UPCA Fixed fees (other procedures and actions)

Procedures/actions Fixed fee

Revocation action EUR 20,000

Counterclaim for revocation same fee as the infringement action subject to a fee limit of EUR 20,000

Application for provisional measures EUR 11,000

Application to preserve evidence EUR 350

Application for an order for inspection EUR 350

Application for an order to freeze assets EUR 3,000

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V. COSTS1. Court Fees, Art. 36 (3) UPCA Fixed fees (other procedures and actions)

Procedures/actions Fixed fee

Filing a protective letter EUR 200

Application to prolong the period of a protective letter kept on the register

EUR 100

Interlocutory appeals EUR 3,000

Application for leave to appeal EUR 3,000

Request for discretionary review EUR 1,500

Application for rehearing EUR 2,500

Application for re-establishement of rights EUR 350

Application to review a case management order

EUR 300

Application to set aside decision by default EUR 1,000

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V. COSTS1. Court Fees, Art. 36 (3) UPCA Value-based fees

Value of the matter in dispute Additional fee

Up to and including EUR 500,000 EUR 0

Up to and including EUR 750,000 EUR 2,500

Up to and including EUR 1,000,000 EUR 5,000






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V. COSTS1. Court Fees, Art. 36 (3) UPCA Examples for court fees

Value of the matter in dispute

Revocation action

Infringement action

Counterclaim for revocation

EUR 250,000 EUR 20,000 EUR 11,000 EUR 11,000

EUR 500,000 EUR 20,000 EUR 11,000 EUR 11,000

EUR 1,000,000 EUR 20,000 EUR 16,000 EUR 16,000

EUR 5,000,000 EUR 20,000 EUR 41,000 EUR 20,000

EUR 10,000,000 EUR 20,000 EUR 66,000 EUR 20,000

More than EUR 30,000,000

EUR 20,000 EUR 231,000 EUR 20,000

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Example for court fees: ‒ infringement action including request for determination of damages‒ plus counterclaim for revocation‒ value-in-dispute: EUR 1 Mio. each

o infringement action: fixed fee EUR 11ko application to determine damages: fixed fee EUR 3ko additional value-based fee for above: EUR 5ko counterclaim for revocation: fixed fee EUR 19k (same fee as infringement

action subject to a fee limit of EUR 20k)

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V. COSTS2. Cost Reimbursement

Art. 69 UPCA: The unsuccessful party shall bear reasonable costs and other expenses incurred by the successful party up to a ceiling set by the RoP

Recoverable costs, RoP 150: reimbursable are ‒ court fees and ‒ costs of the successful party

Ceiling: May 8, 2015, draft Consultation Document:‒ draft scale of ceilings for recoverable costs to be adopted by Administrative

Committee (Art. 69 UPCA)

only reasonable and proportionate legal costs are reimbursable (Art. 69 UPCA)‒ RoP 156 (2): judge-rapporteur decides on the costs to be awarded or apportioned

in accordance with Article 69 UPCA

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V. COSTS2. Cost Reimbursement Scale of ceilings for recoverable costs

Value of action Ceiling for recoverable costs of representation per instance and party

Up to and including EUR 250,000 Up to EUR 50,000

Up to and including EUR 500,000 Up to EUR 75,000

Up to and including EUR 1,000,000 Up to EUR 150,000





Up to and including EUR 30,000,000 Up to EUR 1,000,000

Up to and including EUR 50,000,000 Up to EUR 1,500,000

More than EUR 50,000,000 Up to EUR 3,000,000

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QUESTIONS?

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THANK YOU !

Dr. Thomas Gniadek Attorney-at-Law Associated Partner

+49 89 28628388 [email protected]

Competences German and multi-jurisdictional patent litigation Patents and utility models Opposition and nullity proceedings Procurement of evidence Patent monetization License and R&D agreements Technology transfer Employee invention law