Article 64

Corrective measures in infringement proceedings

1.   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.

2.   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 and implements concerned.

3.   The Court shall order that those measures be carried out at the expense of the infringer, unless particular reasons are invoked for not doing so.

4.   In considering a request for corrective measures pursuant to this Article, the Court shall take into account the need for proportionality between the seriousness of the infringement and the remedies to be ordered, the willingness of the infringer to convert the materials into a non-infringing state, as well as the interests of third parties.

Case Law

Court of Appeal

IPPT20260217, UPC CoA, Rematec v Europe Forestry
Corrective measures and direct infringement – proportionality (Article 25 UPCA, Article 64 UPCA). Following the finding of direct infringement of patent claim 1 by the contested embodiment, corrective measures are ordered, namely the recall and permanent removal of the contested embodiment from the channels of commerce as well as the destruction of the contested embodiment. With regard to the principle of proportionality laid down in Article 64(4) UPCA, it must be clarified that, in order to comply with the order to destroy the contested embodiments in the Defendant’s possession, it is sufficient if the longitudinal bars at the discharge opening that are spaced at least 70 mm apart are replaced with bars spaced below that value. Corrective measures and indirect infringement remains undecided (Article 26 UPCA, Article 64 UPCA). No decision is required, as an order concerning the contested embodiment already results from the direct infringement of patent claim 1. It can therefore remain undecided whether corrective measures pursuant to Article 64 UPCA can be ordered at all in the event of (only) an indirect patent infringement being found and, if so, under what circumstances the ordering of corrective measures in the event of an indirect patent infringement meets the requirement of proportionality pursuant to Article 64(4) UPCA. 

IPPT20251003, UPC CoA, Belkin v Philips
The ordering of remedial measures such as recall, removal from distribution channels and destruction in accordance with Art. 64(2)(b), (d) and (e) UPCA is the norm. The infringer bears the burden of proof and must demonstrate that the measures are disproportionate. 

IPPT20250521, UPC CoA, Knaus Tabbert v Yellow Sphere.

No obvious error with regard to proportionality by orders for recall, removal from commerce and destruction of not only the contested frames, but the entire caravan. The patent does not protect individual components of minor importance, but rather the basic design of the caravan. Even if the disagreements between the parties, as argued by Knaus Tabbert, are only of a financial nature, the Order for destruction in particular may be justified. 

Court of First Instance

IPPT20260318, UPC CFI, LD Düsseldorf, Cup&Cino v Alpina

Permanent injunction granted for recall and destruction of goods. (Article 63(1) UPCA) the defendant markets and uses the invention of the patent. Advertising materials are excluded from destruction (Article 64 (2)(e) UPCA) because they are not covered by the wording of the law. The term “equipment” in Art. 64(2)(e) UPCA refers to materials and equipment used in the manufacture of the products. Purely promotional materials that merely depict the contested embodiments are not covered.

IPPT20251210, UPC CFI, LD Dusseldorf, MAS Maschinen v Altech
Indirect patent infringement - recall , removal from distribution and destruction (Article 26 UPCA, Article 64 UPCA). Orders for recall, removal from the channels of commerce and destruction are generally not considered in cases where products are only challenged on the grounds of indirect patent infringement.

IPPT20251021, UPC CFI, LD The Hague, Amycell
Permanent injunction by default judgement in infringement action, following preliminary measures of 31 July 2024 and appeal of 28 November 2025. Patent valid and infringed. (Article 25 UPCA) Earlier preliminary measures upheld by order of a permanent injunction, with the addition that total penalty be maximised ; (Art. 63 UPCA , Article 34 UPCA).The following measures requested are deemed disproportionate pursuant to Article 64(4) UPCA, The request of delivering up so as to remove and prevent entry into or movement within the channels of commerce is considered superfluous in view of the requested destruction . The request that the destruction of mushrooms is documented by the Defendant and in addition that the Claimant is given the opportunity to watch the destruction, is superfluous. The order will be drafted to clarify that documentation is only necessary in case Claimant decides not to attend the destruction. 

IPPT20250911, UPC CFI, LD The Hague, Washtower v Wasombouw
Preliminary injunction for direct infringement (Article 25 UPCA, Article 62 UPCA, R. 211 RoP), order to communicate information (Article 67 UPCA), recall (Article 64(2)(b) UPCA )and cost award (Article 69 UPCA). 

IPPT20250731, UPC CFI, RD Nordic-Baltic, Texport v Sioen
Corrective measures – recall and destruction (Article 64 UPCA). The Court finds that a request for recall and destruction normally shall be granted, in order to effectively avoid further acts of infringement. It is for the infringer to present facts and proof of any circumstances, e.g. based on proportionality, justifying that the Court dismiss the request or concludes that it is sufficient to amend the infringing goods. Requests do not include consumers or firefighters/end-users. 

IPPT20250718, UPC CFI, LD Mannheim, Fujifilm v Kodak - I

Recall and definitive removal from the channels of commerce are two separate measures (Article 64(2)(b) and (d) UPCA).

IPPT20250606, UPC CFI, LD Mannheim, Dish v Aylo
The application for a declaratory judgment made in the oral hearing is not admissible as an extension of the action, R. 263.1, .2 (a) RoP. According to the system of the EPGÜ, the determination of patent infringement (Art. 64 (2) (a) UPCA) is one of the remedies under Art. 64 UPCA, which are particularly available in addition to the claim for injunctive relief (Art. 63 UPCA). It is independent of the existence of a claim for injunctive relief.

IPPT20250410, UPC CFI, LD Düsseldorf, Yellow Sphere v Tabbert

Direct patent infringement (Article 25 UPCA), revocation dismissed: permanent injunction (Article 63(1) UPCA), provision of information (Article 67 UPCA), and corrective measures (Article 64 UPCA): recall, removing the product from channels of commerce , destruction (Article 64(2)(e) UPCA), Provisional damages of € 100.000 (Article 68 UPCA). 

IPPT20250115, UPC CFI, LD Vienna, Swarco v Strabag
According to the wording of the UPCA, the definitive removal from the channels of commerce is an independent measure, separate from the recall (Article 64(2)(d) and 4 UPCA). It accompanies the recall, whereby removal is only considered if the infringer has the factual and legal possibilities to do so. The wording of specific and sufficiently particular measures must be based on this. No apparent reasons that would make publication of the decision necessary (Article 80 UPCA). When exercising discretion, the purposes of deterring future infringers and raising public awareness, as pursued by Art 80 UPCA, must be taken into account. The patent proprietor's (plaintiff's) interest in prevention, which goes beyond the specific infringement case, must be taken into account when weighing up the interests of the parties to the proceedings. Intervener also treated as a party with regard to the bearing of legal costs; in this case 20% indicative (Article 69(2) UPCA, R. 315.4 RoP). In the present case, the intervener's statement of 19 August 2024 caused the plaintiff relatively little expense because the written proceedings had already been completed for her at that time.

IPPT20250114, UPC CFI, LD Düsseldorf, Ortovox v Mammut
Destruction has to reliably prevent the entry or re-entry of the products into the market (Article 64(2)(e) and (4) UPCA). A software-based deactivation of the voice control could only speak against a destruction if it were ensured that the infringing devices could not be converted back into a patent-infringing state when such a solution was used and then placed on the market. 

IPPT20241122, UPC LD The Hague, Plant-e v Arkyne
Appropriate measures: the use of a specific text is ordered for a recall letter and/or for publication on a website deemed appropriate to ensure that the measure is effective and to avoid a situation in which unclear or confusing messages are spread (article 64 UPCA, Article 10 Enforcement directive). 

IPPT20241115, UPC CFI, LD Munich, Edwards Lifesciences v Meril - II
Rejection of proportionality defence (Articles 63(1) and 64(1) UPCA). Regarding procedures for implementing corrective measures, Article 64(4) of the UPCA explicitly mentions the interests of third parties. While the Agreement on a Unified Patent Court and the Rules of Procedure for the Unified Patent Court do not explicitly mention the interests of third parties or the public otherwise, these interests may also be considered when exercising the discretion stipulated by the "may" in Articles 63(1) and 64(1) UPCA. In considering the interests of third parties and the public interest, the court will give due consideration to the possibility of the infringer entering into a license agreement or initiating proceedings for a mandatory license. 

IPPT20240703, UPC CFI, LD Düsseldorf, Kaldewei v Bette

Recall and definitive removal from the channels of commerce are two separate measures (Article 64(2)(b) and (d) UPCA). Definitive removal accompanies the recall, whereby removal can only be considered if the infringer has the factual and legal means to do so. The formulation of concrete and sufficiently specific measures must be based on this [partially granted].