Key takeaways
- Within the framework of Art. 28 UPCA, the user of the claimed technology can only invoke the rights granted to him by the respective national regulations of the respective contracting member states. On this basis, the existence of a right based on prior use of the invention must be substantiated for each of the protected contracting states.
- The request to lay open books in Art. 68 UPCA in conjunction with R. 131.1 (c) and R. 141 RoP is part of the proceedings to determine the amount of damages ordered and, where applicable, precedes the quantified claim for damages. There is therefore no obligation to open the books in the infringement proceedings.
- Art. 68 (3) (a), (b) UPCA in conjunction with R. 191 RoP provide a substantive entitlement to request information already in the infringement proceedings which the claimant needs in order to be able to check the accuracy of the information and to obtain indications for its calculation of damages. In terms of content, such a request is directed at information on the cost factors on which the defendant relies when calculating its profits. In addition, the patent proprietor may, within the scope of this right for the provision of information, also request evidence for the information pursuant to Art. 67 (1) UPCA, namely invoices or, if these are not available, delivery bills.
- The final removal from the distribution channels is a separate measure from the recall. It accompanies the recall, whereby removal can only be considered if the infringer has the actual and legal means to do so. The formulation of concrete and sufficiently specific measures must be based on this.
- An application for a retrospective extension of the time limit must be made at the latest at the same time as the substantive submission for which the party is requesting the retrospective extension of the time limit. If such an application is filed at a later date, it generally has no prospect of success from the outset.
- The identification of distributors of infringing embodiments within the relevant UPC member states by the defendant is sufficient for the infringment activities of offering and placing on the market pursuant to Art. 25 (a) UPCA, if the defendant has specific indications regarding the delivery of the infringing embodiments into the UPC member states. The substantiation of deliveries into one UPC member state is sufficient for all asserted UPC member states, unless defendant disputes deliveries in specific other UPC member states. Offering and placing on the market infringing embodiments provides a rebuttable assumption for using, importing and storing of infringing embodiments.
Division
Local Division Düsseldorf
UPC number
UPC_CFI_7/2023
Type of proceedings
Main infringement proceedings
Parties
Franz Kaldewei GmbH & Co. KG (Claimant)
Bette GmbH & Co. KG (Defendant)
Patent(s)
EP 3 375 337 B1
Jurisdictions
Austria, Belgium, Denmark, France, Italy, Luxembourg and Netherlands
Body of legislation / Rules
Art. 28 UPCA
Art. 68 UPCA with R. 131.1(c) and R. 141 RoP
Art. 68 (3) (a) UPCA with R. 191 s. 1 alt. 2 RoP
Art. 67 UPCA
Art. 25 (a) UPCA
To view the full article please click here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.