Article 65 UPCA - Who can start revocation action?

Article 65

Decision on the validity of a patent

1. The Court shall decide on the validity of a patent on the basis of an action for revocation or a counterclaim for revocation.

2. The Court may revoke a patent, either entirely or partly, only on the grounds referred to in Articles 138(1) and 139(2) of the EPC.


Note - can anyone start a revocation action?

In France, a person without any interest can not request revocation of a patent. In many EPC countries, the ground for revocation of Article 138(1)(e) EPC - that the proprietor is not entitled - can only be invoked by the person asserting to be entitled. These limits are based on national law. How will the UPCA deal with these? For non-opted out European patents, this would allow for different outcomes on the validity in single case.
For unitary patents, this would result in differences between unitary patents, not at the edges (as in the case of the unitary patent as an object of property), but at the core of patent law. Hence, an autonomous interpretation seems also possible: that Article 65 UPCA stipulates that Article 138(1) can be invoked by anyone without limitation.

Addendum 08.04.2023: Art. 47(6) provides that any natural or legal person, ..., who is concerned by a patent, may bring actions in accordance with the Rules of Procedure.

Article 68 UPCA: Recovery of profits

Recovery of profits

Article 68. Award of damages

4. Where the infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity, the Court may order the recovery of profits or the payment of compensation.

Note

This provision corresponds to Article 13(2) of the Enforcement directive. Recital 13 of the Unitary Patent Regulation states that: " The regime applicable to damages should be governed by the laws of the participating Member States, in particular the provisions implementing Article 13 of [the Enforcement Directive]" . However, since the UPC will have jurisdiction on unitary patents, this should probably be taken as a reference to Article 68 UPCA without the need to consult the law of the various Member States.


Note however that draft Rule 125 does not seem to refer to the compensation of Article 68.4 UPCA. Hence, how it is different from damages is not immediately clear. Probably a "reasonable compensation" is intended.

Article 68 UPCA: damages and willfulness

Unitary patent, willfulness and damages

Article 68. Award of damages

1. 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.

Questions -

1. What must be known - probably at least the existence of the patent but is it enough?
2. Is a fair believe that the activities do not fall within the claimed scope a defence?
3. Is a fair believe that the activities were not covered by Article 25 and 26 UPCA a defence?
4. Is a fair believe that the patent is invalid a defence? (compare Commil v. Cisco (U.S. Supreme Court 2015)
5. What if at the time of the infringing activity, the patent had been revoked in first instance and appeal was pending?
6. Of course, what are the " reasonable grounds to know" ?
7. Knowledge of which persons is sufficient for liability of a corporation?

Art 25 UPCA and devices made after publication but before grant

Article 25 UPCA and products made before grant

Article 25

Right to prevent the direct use of the invention

A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject-matter of the patent, or importing or storing the product for those purposes;

Analysis

• In case a product (say a patented device) is made and used in the EU (contacting states) by a third person between publication of the application and grant of the (non-opted out non-unitary European) patent, can the patent proprietor obtain an injunction to stop further use of that device?

Art. 82 UPCA: Open questions

In this new series, I will provide some first thoughts on the Unitary Patent Package, including the Unified Patent Court Agreement.

Article 82 
Enforcement of decisions and orders

1.   Decisions and orders of the Court shall be enforceable in any Contracting Member State. An order for the enforcement of a decision shall be appended to the decision by the Court.

• What is the difference between a decision and an order?
• Does an order refer only to injunctions? (edit: and payments)
• Is "order" as used in the second sentence the same as "order" in the first sentence?
• Why is an order required for a decision, as specified in the second sentence, if a decision is enforceable according to the first sentence?
• Is an order according to the first sentence directed to the party involved and an order of the second sentence to the authorities entrusted with enforcing?

2.   Where appropriate, the enforcement of a decision may be subject to the provision of security or an equivalent assurance to ensure compensation for any damage suffered, in particular in the case of injunctions.

• Does this also apply to enforcement of orders?
• Does this also apply to final decisions?
• Does "damage" refers only to damage suffered due to the enforcement?

3.   Without prejudice to this Agreement and the Statute, enforcement procedures shall be governed by the law of the Contracting Member State where the enforcement takes place. Any decision of the Court shall be enforced under the same conditions as a decision given in the Contracting Member State where the enforcement takes place.

• What kind of "decision given in the Contracting Member State" is referred to? 
• Are formalities allowed, i.e. the same formalities as for enforceable decisions of that state?
• Can the Contracting Member State require a translation, or that the language is the same as languages of decisions given in that state?
• Can an order be given in a different language than the language of proceedings, e.g. a language of the state of enforcement?
• Can the Rules of Procedure specify anything about enforcement, since (3) does not refer to them?

4.   If a party does not comply with the terms of an order of the Court, that party may be sanctioned with a recurring penalty payment payable to the Court. The individual 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.

• Is a payment the only sanction?
• What if national law provides for imprisonment?
• Is the party in the first sentence the same as in the second sentence? 
• What is the relation between damages and security and penalties payable to the Court?