Injunction regarding SEP patent.
Effective cancellation of opt out (Article 83(4) UPCA, Rule 5.7 RoP). The effective date of a cancellation of an opt-out is the date of entry in the register if no correction is requested from the registry. The only required form for the cancellation is the corresponding CMS workflow. The provided template is not a required form within the meaning of R. 4.1 RoP..
No lis pendens. A nullification procedure in a contracting member state over the patent at issue concerning a different party does not give rise to lis pendens (Article 29 Brussels Recast I).
Exhaustion (Article 29 UPCA) In the context of patent law, restrictions in a licence agreement regarding the right to use products placed on the market on the basis of the licence have no influence on the exhaustion the occurrence of the exhaustion effects. The burden of proof for placing on the market in the European Union with the consent of the patent proprietor lies with the implementer. Insofar as the objection of exhaustion relates to all the challenged embodiments, it must be dealt with immediately in the proceedings. If the objection is successful, the action must be dismissed. If the objection of exhaustion does not relate to all the challenged embodiments, it depends on the circumstances of the individual case whether and to what extent the objection is to be dealt with immediately or only in the context of enforcement.
FRAND Defence (Article 25 UPCA), Article 102 TFEU). A declaration of willingness to licence should be assessed solely on the basis of the content, and not on subsequent conduct, should contain a declaration to that effect, and should not be confused with an offer/a counter-offer. A counter-offer from the implementer must be accompanied by a security at least in the amount of the counter offer, and must be accompanied by a binding undertaking that the patentee will receive the security as a licence payment if his offer ultimately is legally affirmed. Implementer cannot claim a patentee has a dominant market position if it also claimed the patent is not standard essential. The defendant (relying on FRAND defence) has the burden of proving the dominant market position of the patentee. The patent cannot give the patentee a dominant market position if the defendant also relies on the argument that the patent is not standard essential.
