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Rules of Procedure of the Unified Patent Court (RoP)

Rule 118

Decision on the merits

  1. Subject to the following provisions of this Rule, in addition to the orders and measures referred to in Articles 63, 64, 66, 67 and 80 of the Agreement the Court may, if requested, order the payment of damages and compensation according to Article 68 and 32(1)(f) of the Agreement. The amount of the damages and the compensation may be stated in the order or determined in separate proceedings (Rules 125-143). The Court may subject any order or measure to a security to be given by the successful party to the unsuccessful party as determined by the Court in accordance with Rule 352.

  2. In appropriate cases and at the request of the party liable to the orders and measures provided for in paragraph 1 the Court may order damages and/or compensation to be paid to the injured party instead of applying the orders and measures if that person acted unintentionally and without negligence, if execution of the orders and measures in question would cause such party disproportionate harm and if damages and/or compensation to the injured party appear to the Court to be reasonably satisfactory.
  3. If a revocation action is pending before the central division, the local or regional division:

    • (a) may render its decision on the merits of the infringement claim, including its orders, under the condition subsequent pursuant to Article 56(1) of the Agreement that the patent (patents) is (are) not held to be wholly or partially invalid by the final decision in the revocation procedure or a final decision of the European Patent Office or under any other term or condition, or,
      (b) may stay the infringement proceedings pending a decision in the revocation procedure or a decision of the European Patent Office and shall stay the infringement proceedings if it is of the view that there is a high likelihood that the relevant claims of the patent (or patents) will be held to be invalid on any ground by the final decision in the revocation procedure or of the European Patent Office.

  4. Where, in the decision on the merits of a direct action or a counterclaim for revocation, the patent (or patents) is (are) found to be entirely or partially invalid, the Court shall revoke the patent (patents) entirely or partially according to Article 65 of the Agreement.

  5. Where the Court has made orders in accordance with paragraph 3(a) any party may apply to the local or regional division within two months following a final decision of the central division or the Court of Appeal or the European Patent Office as the case may be for orders consequential on such final decision [Rule 354.4 ].

  6. The Court shall decide in principle on the obligation to bear legal costs in accordance with Article 69 of the Agreement.

  7. The Court shall give the decision on the merits as soon as possible after the closure of the oral hearing. The Court shall endeavour to issue the decision on the merits in writing within six weeks of the oral hearing.
  8. In exceptional cases the Court may give its decision immediately after the closure of the oral hearing and provide its reasons on a subsequent date.
  9. The orders of the Court referred to in paragraphs 1 and 3 shall be enforceable on the defendant only after the claimant has notified the Court which part of the orders he intends to enforce and the said notice has been served on the defendant by the Registry.

Notes

Relation with Agreement: Article 77

Status: 15th draft of 31st May 2013