Damage determination procedure

Introduction

The purpose of fixing damages is to compensate for the losses suffered by the patentee (Article 68 of theAgreement on the Unified Patent Court) and to prevent the infringer from enriching himself at the expense of the patentee.

General vision

This procedure is provided for in Rule 10 of the rules of procedure.

This procedure can be, at the judges' choice:

  • included in the decision procedure ("short tour");
    • in this situation, only one decision on the merits is rendered (rule 118 of the rules of procedure) ;
  • be carried out separately (ie a kind of bifurcation, rule 118.1 of rules of procedure),
    • based on the statements of the parties only (“medium tour”)
      • in this situation, two decisions are rendered: a decision on the merits (rule 118 of the rules of procedure) and a decision on the determination of damages (rules 125-143 of rules of procedure) ;
    • by ordering the parties to open their books of account (“long tour”, rule 10 of the rules of procedure)
      • in this situation, three decisions are rendered: a decision on the merits (rule 118 of the rules of procedure), a decision concerning the opening of books (rules 141-143 of rules of procedure) and a decision on the determination of damages (rules 125-143 of rules of procedure).

It is quite clear that the choice of judges will be based on the complexity of the case and the damage calculations.

Request for the determination of damages

Initial request

This request must be sent at most 1 year after receipt of the decision on the merits (Rule 126 of the rules of procedure).

This request may contain a request concerning the opening of the opponent's books (rule 126 of the rules of procedure).

This request must contain (rule 131.1 of rules of procedure) :

  1. concerning the applicant:
    • his name and the place of his establishment (if applicable);
    • the postal and electronic address and the names of the persons authorized to receive the mail;
    • the name of the representative;
  2. concerning the decision on the merits:
    • the date of the decision;
    • the file number;
  3. concerning the request to open the books (if any) (Rule 141 of the rules of procedure) :
    • details of the information provided by the opposing parties following an order for the disclosure of information by the judges;
    • a description of the information the claimant is seeking from the losing party
      • turnover
      • profits from counterfeiting
      • the extent of counterfeiting
      • bank statements and documents
      • any document related to counterfeiting;
    • the reasons for requesting access to this information;
    • the facts on which the applicant relies.

Procedural fees

The applicant must pay:

  • a procedural fee (Rule 132 of the rules of procedure tax table set from the consultation concerning the rules concerning procedural fees) from 3000 €, and
  • a procedural fee linked to the importance of the dispute (Rule 133 of the rules of procedure), ie a variable amount (ie damage and interest = 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 on appeal

In the event of an appeal, the damage determination procedure may be suspended in the event of an argument by the losing party (Rule 136 of the rules of procedure).

Defense at the request for determination of damages

Principle

Of course, if the losing party agrees with the plaintiff's arguments, it will inform the registry within 2 months and the procedure may stop here (rule 137.1 of rules of procedure).

Otherwise, he must provide a defense to this request within the same period of 2 months (Rule 137.2 of the rules of procedure) from the notification of the request.

This defense must contain (rule 138 of the rules of procedure) :

  • his 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;
  • defense arguments;
  • an indication of the facts invoked;
  • the evidence relied on.

In case of request to open books

If the plaintiff has requested the opening of the books, the defendant may (Rule 142.2 of the rules of procedure) answer them at the same time.

Defense Response

Principle

The plaintiff then has a period of 1 month from the notification of the defense (Rule 139 of the rules of procedure) in order to reply.

The elements of the reply must only target the points raised in the defense (Rule 139 of the rules of procedure).

In case of request to open books

If the defendant contests the request to open the books, the plaintiff then has a period of 14 days from the notification to present a reply to this contestation, only (rule 142.3 of the rules of procedure).

Duplicate

Principle

The defendant then has a period of 1 month from the notification of the reply (Rule 139 of the rules of procedure) in order to duplicate.

The elements of the rejoinder must only refer to the points raised in the reply (Rule 139 of the rules of procedure).

In case of request to open books

If the plaintiff has filed a rejoinder to the request to open the books, then the defendant has 14 days from the notification to file a rejoinder (rule 142.3 of the rules of procedure).

Decision to open books (if applicable)

If a request is made to open the books, the judges render a decision on this matter (Rule 144 of the rules of procedure).

After the book opening procedure (if applicable)

If a procedure for opening books has been requested and carried out, the applicant must also indicate (rule 131.2 of the rules of procedure) :

  • repair (damages, license fees, profits) and interest claimed;
  • an indication of the facts on which the plaintiff relies, and in particular the calculations concerning the loss of profits or the profits made by the infringer;
  • the evidence on which the claimant relies;
  • an indication of a possible appeal from the merits;
  • an indication of the damage that is due.

Oral proceedings

Once the written procedure is over, it is possible to organize an oral procedure (rule 140.2 together rule 111 of the rules of procedure).

Decision

Finally, the determination of the damages is made (rule 118 of the rules of procedure).

In fixing damages, the judges take into consideration the negative economic consequences for the patentee as (Article 68 of theAgreement on the Unified Patent Court) :

  • the shortfall suffered by the injured party,
  • any profits unfairly made by the infringer and,
  • in appropriate cases, elements other than economic factors, such as non-pecuniary damage caused to the injured party as a result of counterfeiting.

Alternatively, it is possible to fix a fixed amount of damages on the basis of elements such as, at least, the amount of the royalties or rights which would have been due if the infringer had requested authorization to use the patent in question.

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