Les Dommages- Interêts et la Cour Unifiée des Brevets Damages and the Unified Patent Court

I. Where to look? Which texts apply?  A) Agreement on a Unified Patent Court/ Accord relatif à une juridiction unifiée du brevet:  Article 68  B) The Rules of Procedure/ Règlement de procédure:  Rule

I. Agreement on a Unified Patent Court  Article 68 Award of damages.  Different provisions apply depending if the infringer knowingly engaged in the patent infringing activity or not:  If the infringer knowingly infringed the patent: Article 68 (1) applies.  If the infringer did not knowingly infringed the patent: Article 68 (4) applies.

Why is it important to differentiate between these two types of infringers?  Because the nature of the damages and possibly the amount of the award will be different.  For the infringer who was aware of the infringement, the court shall order damages appropriate to the harm actually suffered as a result of the infringement (art.68 (1)).  For the infringer who was not aware of the infringement the court may order the recovery of profits or the payment of compensation (art.68 (2)).

What are the purposes of damages under the UPC Agreement?  In applying article 68 (1) the Court shall place the injured party in the position it would have been if no infringement had taken place.  The infringer shall not benefit from the infringement.  Damages however cannot be punitive.

What should the Court take into account when awarding damages?  Following Article 68 (3) (a) and (b) the Court shall take into account either :  “all appropriate aspects, such as the negative economic consequences, including lost profits, (…) any unfair profits made by the infringer, and in appropriate factors elements other than economic factors, such as the moral prejudice caused to the injured party by the infringement” Art.68 (3) (a).  Or  Damages can also be set as a lump sum “on the basis of elements such as at least the amount of the royalties or fees which would have been due if the infringer had requested authorisation to the the patent in question” Art.68 (3) (b).

II. The Rules of Procedure  Chapter 4: PROCEDURE FOR THE DETERMINATION OF DAMAGES AND COMPENSATION: 18 rules divided into two sections.  Section 1 : APPLICATION FOR THE DETERMINATION OF DAMAGES (Rules 125 – 140).  Section 2: REQUEST TO LAY OPEN BOOKS (Rules ).

The Application / Section 1: Application for the determination of damages  The determination of the amount of damages ordered for the successful party may be the subject of separate proceedings (Rule 125).  The applicant shall lodge its application no later than one year from service of the final decision on the merits on both infringement (Rule 126).  Contents of the application listed in Rule 127.

The Application / Section 1: Application for the determination of damages  A fee will be applicable but has not been determined yet ( Rule 132 & 133 ).  If the application meets the criteria listed in rule 131 and the fee is duly paid, it will then be registered the Registry (Rule 135).  The application will be heard by the panel which gave the decision on the merits (Rule 135.2).

What happens next?  Following Rule 136 the Court may stay the application pending an appeal on the merits.  If the defendant (to the application) accepts the claim made in the application, it shall inform the Registry within 2 months and the Judge-Rapporteur shall make the order for the determination of damages in accordance with the application.  If the defendant contests the claim, it shall within 2 months lodge a defence.  The applicant may then lodge within 1 month a reply to the defence.

Application / Section 2: Application to lay open books  Rule 141 lists the contents of the request to lay open books which must be in accordance with Rule 131.  Rule 142 states that:  the defendant to the application to lay open books who accepts the request should inform the Registry. The Judge- rapporteur shall then make the order to lay open books.  The defendant who contests the request to lay open books shall within two months lodge a defence.  The applicant to lay open books may then within 14 days of the service of the defence to the request lodge a reply to the defence limited to the matters raised in the defence.  The defendant may within 14 days of service of the reply lodge a rejoinder, limited to the matters raised in the reply.

Application / Section 2: Application to lay open books  Rule 138 (Contents of the Defence of the Application for the determination of damages)  Rule 139 (Reply to the Defence for the determination of damages and Rejoinder to the Reply)  Rule 140 (Further procedure (Application for the determination of damages)  shall apply mutatis mutandis.

Application / Section 2: Application to lay open books  Finally the Court may following Rule 143 :  If the applicant is successful:  Order the Defendant to open its books to the applicant within a time period to be specified and subject to terms defined by the Court.  Inform the applicant and specify a time period within which the procedure for the award of damages shall be continued.  If the applicant is unsuccessful:  Inform the applicant and specify a time period within which the procedure for the award of damages shall be continued.