Rule 354 – Enforcement

1. Subject to Rule 118.8 and 352 decisions and orders of the Court shall be directly enforceable from their date of service in each Contracting Member State. Enforcement shall take place in accordance with the enforcement procedures and conditions governed by the law of the particular Contracting Member State where enforcement takes place.

2. Where during an action an enforceable decision or order of the Court is subsequently varied or revoked, the Court may order the party which has enforced such decision or order, upon the request of the party against whom the decision or order has been enforced, to provide appropriate compensation for any injury caused by the enforcement. Rule 125 shall apply mutatis mutandis. Where an enforceable decision or order has been made pursuant to a finding of infringement of a patent and, following the conclusion of the action, the patent is amended or revoked, the Court may order, upon the request of the party against whom the decision or order would be enforceable, that the decision or order ceases to be enforceable.

3. The Court’s decisions and orders may provide for periodic penalty payments payable to the Court in the event that a party fails to comply with the terms of the order or an earlier order. The value of such payments shall be set by the Court having regard to the importance of the order in question.

4. If it is alleged that a party has failed to comply with the terms of the order of the Court, the first instance panel of the division in question may decide on penalty payments provided for in the order upon the request of the other party or of its own motion. The procedure foreseen in Rule 264 shall apply. After having heard both parties the Court may make an appropriate order which may be subject to an appeal pursuant to Rule 220.2.

Relation with Agreement: Article 82

Case law:

IPPT20240213, UPC CFI, LD The Hague, Plant-e v Arkyne
Defendant’s request for security for costs (“cautio iudicatum solvi”) rejected (Article 69(4) UPCA; Rule 158 RoP, Article 24 UPCA). Protecting the rights of the defendant should be balanced against the right of the claimant to enforce its patent rights. The main rationale for the cautio is to secure the enforceability of a potential cost order. If such order is directly enforceable after it is granted, it can serve as grounds not to allow a cautio at the start of or during the proceedings. UPC decisions and orders are directly enforceable in the Netherlands in accordance with Art. 82 UPCA, Art. 71d Brussels and R. 354.1 RoP. A cautio in this case is hence not justified because of the risk that a possible cost order in favour of Bioo will not be directly enforceable. This contrasts with the situation decided by the CD Munich [IPPT20231030]  – [....] – on which Bioo relies. In that case the relevant claimant was domiciled outside the EU and no treaty regarding the execution of judgments was in place. 

IPPT20231227, UPC CFI, LD Munich, KrausMaffei v Troester
Protection of confidential information (Rule 262A RoP). The amount of a penalty payment under Rule 354.3 of the Rules of Procedure is limited by request.

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. Defendants have to pay the full costs (Article 69 UPCA, Rule 354(4) RoP): (a) all of the infringements asserted by the applicants were also to be regarded as infringements, so that the applicants were completely successful with their application in this respect. (b) the fact that the applicants formally requested the imposition of significantly higher periodic penalty payments does not, in the view of the Chamber, lead to the applicants having to bear part of the costs of the periodic penalty payment proceedings, taking into account the fundamental considerations on the allocation of costs in Art. 69(1) and (2) UPCA, since the determination of the amount is at the discretion of the court (Rule 354.4 RoP) and information on the amount provided by the applicant can at most have the character of a proposal in this respect.

IPPT20231018, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Recurring penalty payments are imposed on the basis of article 82(4) UPCA and not governed by provisions of national enforcement law (Article 82(4) UPCA, Rule 354 RoP). Provision of article 82(3) UPCA is superseded by Art. 82 (4) UPCA in conjunction with R. 354.3 and .354.3 RoP. € 26.500 awarded in recurring penalty payment to the UPC because of non-compliance with ex parte provisional injunction (article 82(4) UPCA). If a court order is not complied with by one of the parties, the UPC may – either at the request of the other party or ex officio – decide on the imposition of the periodic penalty payments provided for in the order.  The decisive criterion for determining the amount of the penalty payment is the significance of the order and thus ultimately the interest of the creditor in enforcing it, which may consist, for example, in distributing the patented products. The recurring penalty payment has a dual purpose: primarily a punitive function as well as a penalty for violation of the court order. It presupposes fault on the part of the debtor. The dual purpose requires that primarily the debtor and his conduct is considered. In particular, the type, scope and duration of the infringement, the degree of fault, the infringer's advantage from the infringing act and the harms of the committed and possible future infringing acts for the infringed party must be taken into account. The debtor's past conduct is a decisive, although not necessarily the sole, indicator for the amount of the penalty payment to be imposed. The more frequently and intensively the debtor has violated the restraining order imposed on him, the more clearly he has expressed his unwillingness to comply with the restraining order. The assessment of the penalty payment must take this into account: If the debtor has already violated the cease-and-desist order several times in the past, the necessary pressure increases in order to force him to comply with the order in the future. Therefore, the respective penalty payment must be correspondingly higher. If, on the other hand, the debtor has made a serious effort to comply with the injunction, this must be taken into account in his favour.