Rule 118 – Decision on the merits

1. In addition to the orders and measures and without 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. The amount of the damages or the compensation may be stated in the order or determined in separate proceedings [Rules 125-144].

2. If, while there are infringement proceedings before a local or regional division, a revocation action is pending between the same parties before the central division or an opposition is pending before the European Patent Office, 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 is not held to be wholly or partially invalid by the final decision in the revocation proceedings 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 will be held to be invalid on any ground by the final decision in the revocation proceedings or of the European Patent Office where such decision of the European Patent Office may be expected to be given rapidly.

3. Where, in the decision on the merits of a revocation action, the patent is found to be entirely or partially invalid, the Court shall revoke the patent entirely or partially according to Article 65 of the Agreement.

4. Where the Court has made orders in accordance with paragraph 2(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 on the validity of the patent for orders consequential on such final decision [Rule 354.2].

5. The Court shall decide in principle on the obligation to bear legal costs in accordance with Article 69 of the Agreement. The Court may order in advance of the decision that the parties submit a preliminary estimate of the legal costs that they will seek to recover.

6. 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. The Court shall give reasons for its decision.

7. The Court may give its decision immediately after the closure of the oral hearing and provide its reasons on a subsequent date.

8. The orders of the Court referred to in paragraphs 1 and 2(a) shall be enforceable on the defendant only after the claimant has notified the Court which part of the orders he intends to enforce, a certified translation of the orders in accordance with Rule 7.2, where applicable, into the official language of a Contracting Member State in which the enforcement shall take place has been provided by the claimant and the said notice and, where applicable, a certified translation of the orders have been served on the defendant by the Registry. 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.

Relation with Agreement: Article 77

Case Law:

Court of Appeal

IPPT20240417, UPC CoA, Curio Bioscience v 10x Genomics
Change of language of the proceedings into the language of the patent on grounds of fairness: all relevant circumstances shall be taken into account (Article 49 UPCA, Rule 323 RoP). No decision on the reimbursement of legal costs will be made in this appeal, since this order of the Court of Appeal is not a final order or decision, i.e. not an order or decision concluding the proceedings pending before the Court of First Instance. (Article 69 UPCA, Rule 118 RoP, Rule 242 RoP

Court of First Instance

IPPT20240423, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
By way of exception the order of 30 April 2024 will be in German, accompanied by a certified English translation. (Article 49 UPCA, Rule 14(2)(c) RoP, Rule 118(8) RoP) After change of the language of the proceedings into English by the Court of Appeal at 17 April 2024, exceptional use is made of the possibility for German Local Divisions to issue and deliver an order in German together with a certified translation in order to make effective use of preparatory work and not to delay the proceedings unnecessarily.

IPPT20231219, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Settlement of application for preliminary measures. Under the circumstances it is equitable to order the defendant to pay the entire costs, irrespective of the prospect of success of the application for interim measures (Article 69 UPCA; Rule 118.5 RoP). Irrespective of the question of whether the applicant's request was fully admissible and justified at the time of the final event, the defendants could have submitted the declaration and undertaking of discontinuance in a much more cost-saving manner and have caused the applicant unnecessary costs in the form of the costs of the legal dispute and the applicant's other costs. Only obligation to reimburse costs can at present be determined, any further claims dismissed as currently premature. A specific amount to be reimbursed has not yet been named and it has not been submitted that the costs incurred by the applicant will certainly exceed the upper limit of reimbursable costs of € 200.000, only the obligation to reimburse can be determined on the merits at present. Any further claims must therefore be dismissed as currently premature (Rule 118.5 RoP; Rule 151 RoP).

IPPT20231205, UPC CFI, LD Munich, 10x Genomics v Nanostring

Recurring penalty payments not subject to enforcement requirements under national law nor notification by the claimant (Article 82(4) UPCA, Rule 118(8) RoP, Rule 354 RoP). Non-compliance with the terms of a UPC order (article 62 UPCA) is sanctioned with a penalty payment on the basis of article 82(4) UPCA alone and not subject to further enforcement requirements existing under national enforcement laws of contracting member states. (see also Local Division Düsseldorf,  IPPT20231018, myStromer v Revolt Zycling). Rule 118(8) RoP – “orders shall be enforceable only after the claimant has notified the Court which part of the orders he intends to enforce” – does not apply to orders under Article 62 UPCA (provisional and protective measures). According to its clear wording ("The orders referred to in paragraphs 1 and 2(a)..."), Rule 118.8 of the Rules of Procedure does not apply to orders under Art. 62 UPCA.