Introduction

The assessment of damages aims to compensate the losses suffered by the patent proprietor (Article 68 of the Unified Patent Court Agreement) and to prevent the infringer from profiting at the expense of the patent proprietor.

Overview

This procedure is provided for under Rule 10 of the Rules of Procedure.

This procedure may, at the discretion of the judges:

  • be included in the main proceedings (« short tour »);
    • in this situation, a single decision on the merits is issued (Rule 118 of the Rules of Procedure);
  • be conducted separately (i.e., a form of bifurcation, Rule 118.1 of the Rules of Procedure),
    • based solely on the parties’ submissions (« medium tour »),
      • in this situation, two decisions are issued: one on the merits (Rule 118 of the Rules of Procedure) and one on the assessment of damages (Rules 125-143 of the Rules of Procedure);
    • by ordering the parties to disclose their account books (« long tour », Rule 10 of the Rules of Procedure),
      • in this situation, three decisions are issued: one on the merits (Rule 118 of the Rules of Procedure), one concerning the disclosure of account books (Rules 141-143 of the Rules of Procedure), and one on the assessment of damages (Rules 125-143 of the Rules of Procedure).

It is quite clear that the judges’ choice will be based on the complexity of the case and the calculation of damages.

Request for Damages Assessment

Initial Request

This request must be filed within a maximum of 1 year after receipt of the decision on the merits (Rule 126 of the Rules of Procedure).

This request may include a request for the disclosure of the opposing party’s account books (Rule 126 of the Rules of Procedure).

This request must contain (Rule 131.1 of the Rules of Procedure):

  1. regarding the claimant:
    • their name and place of establishment (if applicable);
    • postal and email addresses and the names of persons authorized to receive correspondence;
    • the name of the representative;
  2. regarding the decision on the merits:
    • the date of the decision;
    • the case number;
  3. regarding the request for disclosure of account books (if applicable) (Rule 141 of the Rules of Procedure):
    • details of the information provided by the opposing party following a court order for information disclosure;
    • a description of the information the claimant seeks to obtain from the losing party:
      • turnover
      • profits made from the infringing acts
      • the extent of the infringement
      • account statements and bank documents
      • any documents related to the infringement;
    • the reasons supporting the request for access to this information;
    • the facts on which the claimant relies.

Procedural Official Fees

The applicant must pay:

  • a procedural official fee (Rule 132 of the Rules of Procedure together with the table of official fees from the consultation on the rules on court official fees and recoverable costs) of €3,000, and
  • a procedural official fee related to the value of the dispute (Rule 133 of the Rules of Procedure), i.e. a variable amount (i.e. damages = d&i)
    • +€2,500 if €500,000 < d&i <= €750,000
    • +€4,000 if €500,000 < d&i <= €1,000,000
    • +€8,000 if €500,000 < d&i <= €1,500,000
    • +€13,000 if €500,000 < d&i <= €2,000,000
    • +€20,000 if €500,000 < d&i <= €3,000,000
    • +€26,000 if €500,000 < d&i <= €4,000,000
    • +€32,000 if €500,000 < d&i <= €5,000,000
    • +€39,000 if €500,000 < d&i <= €6,000,000
    • +€46,000 if €500,000 < d&i <= €7,000,000
    • +€52,000 if €500,000 < d&i <= €8,000,000
    • +€58,000 if €500,000 < d&i <= €9,000,000
    • +€65,000 if €500,000 < d&i <= €10,000,000
    • +€75,000 if €500,000 < d&i <= €15,000,000
    • +€100,000 if €500,000 < d&i <= €20,000,000
    • +€125,000 if €500,000 < d&i <= €25,000,000
    • +€150,000 if €500,000 < d&i <= €30,000,000
    • +€250,000 if €500,000 < d&i <= €50,000,000
    • +€325,000 if x > €50,000,000

Stay in Case of Appeal

In case of appeal, the procedure for determining damages may be stayed upon a reasoned request by the losing party (Rule 136 of the Rules of Procedure).

Response to the Request for Determination of Damages

Principle

Of course, if the losing party agrees with the applicant’s arguments, it shall inform the Registry within 2 months, and the procedure may end here (Rule 137.1 of the Rules of Procedure).

Otherwise, it must file a response to this request within the same 2-month period (Rule 137.2 of the Rules of Procedure) from the date of notification of the request.

This response must contain (Rule 138 of the Rules of Procedure):

  • its name and the representative;
  • the postal and electronic addresses to be used and the names and addresses of the persons authorized to accept service;
  • the internal reference assigned to the file;
  • the arguments for the defense;
  • an indication of the facts relied upon;
  • the evidence relied upon.

In Case of Request for Account of Profits

If the applicant has requested an account of profits, the defendant may (Rule 142.2 of the Rules of Procedure) respond to it at the same time.

Reply to the Defense

Principle

The applicant then has a period of 1 month from the date of notification of the defense (Rule 139 of the Rules of Procedure) to file a reply.

The elements of the reply must only address the points raised in the defense (Rule 139 of the Rules of Procedure).

In Case of Request for Account of Profits

If the defendant contests the request for an account of profits, the applicant then has a period of 14 days from the date of notification to file a reply to this contestation only (Rule 142.3 of the Rules of Procedure).

Reply

Principle

The defendant then has a period of 1 month from the notification of the reply (Rule 139 of the Rules of Procedure) to file a reply.

The elements of the reply must only address the points raised in the reply (Rule 139 of the Rules of Procedure).

In the event of a request for the production of accounts

If the claimant has filed a reply concerning the request for the production of accounts, the defendant then has a period of 14 days from the notification to file a reply (Rule 142.3 of the Rules of Procedure).

Decision on the production of accounts (if applicable)

If a request for the production of accounts is made, the judges render a decision on this matter (Rule 144 of the Rules of Procedure).

After the procedure for the production of accounts (if applicable)

If a procedure for the production of accounts has been requested and carried out, the claimant must additionally specify (Rule 131.2 of the Rules of Procedure):

  • the compensation (damages, license fees, profits) and interest sought;
  • an indication of the facts on which the claimant relies, including the calculations concerning lost profits or profits made by the infringer;
  • the evidence on which the claimant relies;
  • an indication regarding a potential appeal of the decision on the merits;
  • an indication of the damages that are due.

Oral proceedings

Once the written procedure is concluded, it is possible to organize oral proceedings (Rule 140.2 together with Rule 111 of the Rules of Procedure).

Decision

Finally, the decision concerning the determination of damages is rendered (Rule 118 of the Rules of Procedure).

In determining damages, the judges take into consideration the negative economic consequences for the patent proprietor, such as (Article 68 of the Agreement on a Unified Patent Court):

  • the lost profits suffered by the injured party,
  • any unfair profits made by the infringer, and
  • in appropriate cases, factors other than economic ones, such as the moral prejudice caused to the injured party as a result of the infringement.

Alternatively, it is possible to determine a lump sum for damages based on elements such as, at least, the amount of the official fees or royalties that would have been due if the infringer had requested authorization to use the patent in question.