Once the oral procedure is over, the judges can make the decision on the merits.
Content of the decision
This decision on the merits may include:
- permanent injunctions (Rule 118.1 of the Rules of Procedure and Article 63 of the Agreement on the Unified Patent Court);
- corrective measures (Rule 118.1 of the Rules of Procedure and Article 64 of the Agreement on the Unified Patent Court) such as:
- a product recall;
- destruction;
- etc.
- the communication of information (Rule 118.1 of the Rules of Procedure and Article 67 of the Agreement on the Unified Patent Court) concerning the origin of the products or the extent of the infringement;
- the award of damages (Rule 118.1 of the Rules of Procedure and Article 68 of the Agreement on the Unified Patent Court);
- the publication of the decision (Rule 118.1 of the Rules of Procedure and Article 80 of the Agreement on the Unified Patent Court).
Even though normally a separate procedure exists for the fixing of costs (Rule 150 and following of the Rules of Procedure), it is possible that the court may ask the parties in advance for the costs they will seek to recover (Rule 118.5 of the Rules of Procedure).
For more details regarding damages, corrective measures, and injunctions, please refer to the article on Injunctions and Corrective Measures.
Details
Decision regarding infringement
It is quite possible that the decision (i.e., regarding infringement) may be conditional on the patent not being found invalid (Rule 118.2 a of the Rules of Procedure).
Decision regarding nullity
Regarding nullity actions, the judges can render decisions of total or partial nullity (Rule 118.3 of the Rules of Procedure and Article 65 of the Agreement on the Unified Patent Court).
In particular, if the grounds for nullity affect the patent only partially, an amendment of the claims must be made to allow for partial revocation. This is quite important because it is not the approach of the EPO.
Extension of the subject matter of a patent and partial annulment
The Unified Patent Court (UPC) has ruled on a case concerning the extension of the subject matter of a patent beyond the content of the initial application. In the decision ORD_598482/2023, the UPC revoked the patent for extension of the subject matter, recalling the strict criteria for evaluating modifications made to a patent.
This decision emphasizes that the proposed modifications in the auxiliary requests may be rejected if they do not meet the clarity requirements (Article 84 EPC) or if they extend the subject matter of the patent beyond the content of the initial application (Rule 30.1 c) RoP and Rule 50.2 RoP).
Furthermore, the UPC clarified that Article 65(3) of the Agreement on the Unified Patent Court (UPCA) allows for partial annulment of a patent, but this possibility does not apply to auxiliary requests for modification that do not meet the legal criteria. This decision thus reinforces the consistency between the practices of the UPC and those of the European Patent Office (EPO) regarding the extension of the subject matter of a patent.