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. 3. The applicant shall pay a fee for the request in accordance with Part 6. 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:

Court of Appeal

IPPT20260204, UPC CoA, EOFlow v Insulet
Appeal against order imposing penalties inadmissible. (Article 69 UPCA,  Art. 82(4) UPCA, Rule 354.4 RoP).  Leave to appeal granted by first instance regarding confidentiality request (Rule 221 RoP) cannot be presumed to extend to the order imposing the penalty. The Legal remedy against a cost order for penalty payments (Article 69 UPCA) is an appeal under R. 220.2 RoP and not an application for leave to appeal against cost decisions according to R. 221 RoP. (Rule 220.2 RoP, Rule 221 RoP). Orders on costs, which concern both, the question of who bears the costs and the amount - are subject to the same legal remedy as the decision on the merits. 

IPPT20251229, UPC COA, Amazon v InterDigital

Suspensive effect of appeal from anti-suit order dismissed. (Rule 223 RoP). Amazon has not established that irreversible harm is imminent and that not ordering suspensive effect would render the appeal-at-hand devoid of purpose. Enforcement (Rule. 354.4 RoP). The risk that the court may initiate penalty proceedings of its own motion under R. 354.4 RoP , at any time, does not justify an order of suspensive effect.   

IPPT20251014, UPC CoA, Kodak v Fujifilm
Order for the payment of € 100.000 set aside for lack of legal basis (R. 354.4 RoP). Any order for the payment of a penalty sum due to the non-compliance of any order, requires a prior order in which the order that has not been complied with was reinforced with the possibility of a penalty payment. Such a penalty order was requested by Fujifilm, but rejected by the LDM. Penalty order for a possible future non-compliance by Kodak is possible and it is not relevant in this respect that Fujifilm in its Statement of claim did not request a penalty order in relation to the orders for destruction, recall and removal from the channels of commerce. Generally on penalty orders (R. 354.3 and 354.4 RoP). Generally included in order or decision on the merits as this enhances legal certainty. May be requested later without requiring an appeal. Penalty amount to be set by the Court and should be sufficiently deterrent to be coercive and within reasonable limits to be appropriate. Penalty order must specify upon which occurrence a penalty may be forfeited, may set a maximum, which may be increased later, should generally specify the time period for compliance. Suggested penalty must be included in the application. Any order to pay a penalty must be based on a prior penalty order having been made. Burden of proof that a penalty reinforced order has been fully and timely complied with lies with the defendant, since the evidence concerns information within the defendant’s own sphere which is not accessible to the claimant. Confidentiality issues: if the defendant can reasonably foresee that the orders and evidence may require it to disclose confidential information, this should be raised by the defendant during the proceedings on the merits, so that where necessary in the order or decision appropriate measures can be taken to protect such confidential information. Although it would still be possible to file a confidentiality request thereafter, confidentiality issues generally do not stay the time period set for compliance with a penalty reinforced order. Time period for compliance starts upon service of the order or decision or upon notification (R. 118.8 RoP). Translation only required from the orders that the claimant actually wishes to enforce to allow the enforcing authority (e.g. the bailiff) to understand what it needs to enforce (R. 118.8 RoP). No need to serve enforcement notice on the defendant other than via upload in CMS.

IPPT20250604, UPC CoA, Hybridgenerator v HGSystem
Penalty payments because of alleged failure to comply with the terms of a first instance court order, are to be decided by a panel of the Court (instead of a single judge) upon request of the other party or of its own motion (R. 354.4 RoP. The procedure foreseen in R. 264 RoP shall apply (opportunity to be heard). At this stage, there is a right of the other party to be heard. It can be left open whether it would have been possible for the parties to agree on a single judge (R. 345.6 RoP).

IPPT20250530, UPC CoA, Belkin v Philips

Recurring penalty payment (Article 82.4 UPCA, R. 354.4 RoP). The principle of nulla poena sine culpa means that a penalty sum shall only be imposed when the defendant's fault can be established. Maximum penalty amount payable must be defined in the order providing for a penalty. The appropriate amount of the penalty payment can only be reliably determined once the nature and extent of the breach of the order have been established. The fact that only a maximum penalty payment for each day of non-compliance (up to € 50.000) was provided – rather a specific amount – does not give rise to concerns. The amount of the penalty payment (later) to be imposed does not solely depend on the importance of the order that is reinforced with a penalty. After a breach has occurred, the Court must, in exercising its discretion, determine the amount of the penalty payment in a manner that is adapted to the circumstances and proportionate to the breach of the order. Relevant factors in this regard include, among others, aspects such as the severity of the established breach, its duration, and the defendant's ability to pay. 

Court of First Instance

IPPT20251204, UPC CFI, CD Milan, Insulet v EOFLOW
Follows from Order of 22 July 2025 by CFI CD containing enforceable penalty provisions, following an Order on injunctive relief issued by the Court of Appeal’s Order dated 30 April 2025. Order for the payment of penalty of  EUR 150,000 for EoFlow’s non-compliance with obligations. (Article 62 UPCA, Article 82.4 UPCA, Rule 354 RoP)  A penalty order issued under Art. 82.4 UPCA, or a preliminary injunction issued under Art. 62 UPCA, may be enforced by the UPC itself. Preliminary injunctions are also court orders within the meaning of Article 82 UPCA. Determination of penalty […] lies with the competence of the relevant division of the UPC at first instance. This jurisdiction extends to the enforcement of decisions issued by the Court of Appeal at second instance.  The order of 22 July by the CD Milan cannot be applied retrospectively to the COA decision of 30 April. Penalty assessed solely on the basis of order of 30 April. Only judgments that are purely interpretative of (already) established legal provisions may be applied retroactively. The detailed prohibitions set out in CD Milan’s decision, namely the penalties applicable to each item imported in violation of the order, cannot be applied retrospectively to the CoA’s order, even by way of interpretation, since the party affected by the injunction is bound solely ratione temporis by the order in force at that very moment and by the terms as specified therein. The CoA’s order dated 30 April 2025 is sufficiently clear and enforceable under R. 354 RoP. The imposed “periodic penalty payments of up to EUR 250,000 for each individual infringement satisfy the requirements of R. 354.3 RoP by clearly identifying both (i) the triggering event -  the circumstance upon which a specified penalty sum may be forfeited, and  (ii) the amount of the penalty which may be forfeited.  Accordingly, there is no lacuna that would require the Court of Appeal to issue any, more precise, further penalty order. The Court interprets the prescription in the order as referring to the type of violation established, i.e. the import or export of infringing goods, rather than to each individual product that was illegally exported. An interpretation applying a penalty of €250,000 for each individual act of importation or trade would be completely out of step with the market for the product and the market size of the parties involved.  If there is any uncertainty regarding the interpretation of the prescription of the CoA, the construction that is most favourable to the infringer must be adopted (in dubio pro reo). The purpose of R. 354.4 RoP is to enable the effective enforcement of injunctions. It ensures that the Court retains the flexibility to tailor penalties to the seriousness, duration and wilfulness of the infringement. The amount of penalty set by the Court of Appeal is not  merely indicative. Were that interpretation correct, the Court of Appeal would have issued an order devoid of practical effect and therefore unenforceable, which would run counter to the very purpose of the order issued.
 

IPPT20260130, UPC CFI, LD Mannheim, Fujifilm v Kodak
Panel review of a judge rapporteur penalty order. (R. 333 RoP) . A penalty order may be issued by the Judge-rapporteur alone. (R. 354.4 RoP, R 1.2(a) RoP). Rule 354.4 RoP makes clear in its last sentence, that “after having heard both parties the Court may make an appropriate order which may be subject to an appeal pursuant to Rule 220.2.”. “The Court” is interpreted pursuant to Rule 1.2(a) RoP , which states that the respective act may be performed by the presiding judge or the judge rapporteur of the panel. Rule 354.4 RoP is the only place, where the Rules refer to “first instance panel of the division” as opposed to “panel of the Court”. The rule wants to make clear, that an enforcement application is to be handled by the same Panel – in the sense of an organizational unit of the CFI – which dealt with the decision on the merits. There is no reason, why an application for enforcement should always be dealt with by the whole panel. Whether the operative part of the panel decision or order has been complied with, can adequately and more efficiently be dealt with, if the Judge rapporteur decides upon the application first and if the Panel only gets involved upon application for review . 

IPPT20251222, UPC CFI, LD Mannheim, InterDigital v Amazon
Enforcement warning (R. 354.4 RoP). A UPC decision is not to be respected out of itself and no sanctions can follow automatically in case of disobedience […] but the UPC CoA held that a clear penalty order is to be included in the order or decision on the merits as this enhances legal certainty. A penalty may only be ordered, if such order finds its basis in a prior penalty order having been made (Order of 14 October 2025, UPC CoA 699/2025 – FUJI/Kodak), 

IPPT20250804, UPC CFI, LD Mannheim, Hurom v NUC
Additional two weeks extension, because of summer vacation period, of the time period for comments on claimant’s request for imposition of a penalty payment to enforce the Defendant’s obligation to provide information (R. 9.3(a) RoP, Article 67 UPCA) . 

IPPT20250730, UPC CFI, LD Düsseldorf, Aesculap v Shanghai International
Recurring penalty of up to € 30.000 on non-proper fulfilment of the obligation to provide information pursuant to order to communicate information of 10 July 2025 (R. 354.3 RoP; Article 67 UPCA). No further deadline required as the deadline was has already been set by the plaintiff (R. 118.8 RoP). Application is successful insofar as the applicant additionally seeks the threat of penalty payments. Setting a maximum limit per day gives the local chamber the necessary flexibility to also take into account the respondent's conduct in the event of an infringement and, on that basis, to be able to set an appropriate penalty payment in accordance with R. 354(4) RoP.

IPPT20250709, UPC CFI, LD Mannheim, InterDigital v Disney
Order under penalty of a fine of € 100.000 to accept service of anti-anti-suit injunction (AASI) by the representatives of defendants in the main proceedings (R. 354.3 RoP, R. 213 RoP). The request and the order issued are therefore inextricably linked to the main proceedings. Therefore, the power of attorney cannot be effectively restricted in this respect either. This is already evident from the fact that the representation of the respondents by the lawyers in the main proceedings clearly cannot depend on whether the AASI application is filed in the main proceedings themselves as an accompanying application under Rule 206 VerfO or in separate application proceedings. In both cases, the subject matter is the same: the protection of the main proceedings from the imposition of a ban on litigation in a foreign forum, which is intended to prevent the domestic continuation of the proceedings. Violation of code of conduct by representative which may lead to exclusion (R. 290.2 RoP, R. 291 RoP).

IPPT20250723, UPC CFI, LD Mannheim, Fujifilm v Kodak

€ 100.000+ penalty imposed upon Defendants (Article 82 UPCA, R. 354 RoP) to punish their shortcomings and disobedience with the operative part of the decision of the UPC Claimant seeks to enforce and to coerce Defendants to comply with what had been ordered by the Court. The penalty regime imposed is three-pronged. For the past period, a lump sum penalty payment (€ 100.000) is being imposed. In a next step, moderate daily penalty payments (€ 2.500 per day) are being imposed and a time period is set to catch up on what should already have been provided. In a further step drastic penalty payments (€ 10.000 per day) are being imposed, in case Defendants still are not prepared to comply with the decisions and orders of the UPC. No prior penalty warning required since the court did not put enforcement of the decision under further preconditions, it had been clear from the date of service, i.e. 2 April 2025 of the decision that compliance is mandatory and the only remaining step is a notification of the Claimant according to R. 118.8 RoP. No further warning was necessary. Indeed neither R. 354.3 or .4 RoP explicitly call for a warning. The language of R. 354.3 RoP does not call for a warning at least when – as it had been the case here – the decision on the merits unambiguously states that the imposition of penalties may be the court’s reaction to disobedience with the operative part of the judgement. One week deadline for recall and removal from channels of commerce seems reasonable (Article 62 UPCA)

IPPT20250716, UPC CFI, LD Mannheim, Fujifilm v Kodak

Panel rejects request to review rejection by judge-rapporteur of request to issue a penalty warning letter (R. 354 RoP, R. 333 RoP)). The panel did not - in the main decision - fix time periods for the fulfilment of operative parts B.III, B.IV. and B.V. and also did not decide on amounts of penalty up-front. All related points will have to be addressed in the course of an application to impose penalties and only there appropriate penalties will have to be set in the light of the facts of the case. If Claimant had disagreed with the main decision, it would have been bound to challenge the points subject to this review with an appeal against the decision on the merits. It is not for the panel to now alter the operative part of that decision upon a request for panel review.

IPPT20250603, UPC CFI, LD Mannheim, Fujifilm v Kodak

Request to issue a penalty warning rejected (Article 82(4) UPCA, R. 354 RoP). The panel explicitly decided in the main decision that no fixed time period for the provision of the information is set and that no amount of penalty is set up-front. All related points will have to be addressed in the course of an application to impose penalties.

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.