Please see my presentation on the procedure, the remedies and the costs associated with the new European Unified Patent Court _ 4th Annual Patent Expert Conference, February 9, 2016, Naples, Florida

1. UNIFIED PATENT COURT
& UNITARY PATENT
PART 3
Dr. Thomas Gniadek
Naples, Florida – February 9, 2016

2. 2
TABLE OF CONTENTS
I. STRUCTURE OF PROCEEDINGS
I. BIFURCATION
II. PRESERVATION OF EVIDENCE
III. REMEDIES
1. Injunction
2. Preliminary Injunction
3. Corrective Measures
4. Damages
5. Communication of Information
IV. COSTS
1. Court Fees, Art. 36 (3) UPCA
2. Cost Reimbursement

3. 3
I. STRUCTURE OF PROCEEDINGS
1. 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!

4. 4
I. STRUCTURE OF PROCEEDINGS
2. 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))

5. 5
I. STRUCTURE OF PROCEEDINGS
2. 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)

6. 6
I. STRUCTURE OF PROCEEDINGS
3. 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

8. 8
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 case
stay or not
(Art. 33 (3)(c) UPCA)

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III. PRESERVATION OF EVIDENCE
1. 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.”

10. 10
III. PRESERVATION OF EVIDENCE
2. 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

11. 11
III. PRESERVATION OF EVIDENCE
3. 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

12. 12
III. PRESERVATION OF EVIDENCE
4. 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. REMEDIES
1. 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 of
non-compliance with the injunction (where appropriate)

14. 14
IV. REMEDIES
2. 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.”

15. 15
IV. REMEDIES
3. 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

16. 16
IV. REMEDIES
4. 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

17. 17
IV. REMEDIES
4. 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. REMEDIES
5. 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. REMEDIES
5. 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

20. 20
V. COSTS
Total 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

21. 21
V. COSTS
1. 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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V. COSTS
1. Court Fees, Art. 36 (3) UPCA
 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. COSTS
1. 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. COSTS
1. 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. COSTS
1. 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
Up to and including EUR 1,500,000 EUR 10,000
Up to and including EUR 2,000,000 EUR 15,000
Up to and including EUR 3,000,000 EUR 20,000
Up to and including EUR 4,000,000 EUR 25,000
Up to and including EUR 5,000,000 EUR 30,000

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V. COSTS
1. 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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V. COSTS
1. Court Fees, Art. 36 (3) UPCA
 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 11k
o application to determine damages: fixed fee EUR 3k
o additional value-based fee for above: EUR 5k
o 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. COSTS
2. 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. COSTS
2. 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 2,000,000 Up to EUR 200,000
Up to and including EUR 4,000,000 Up to EUR 400,000
Up to and including EUR 8,000,000 Up to EUR 600,000
Up to and including EUR 16,000,000 Up to EUR 800,000
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
thomas.gniadek@noerr.com
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