Casalonga UPC rules of procedure
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Rule 118Decision on the merits

1. In addition to the orders and measures and without prejudice to the discretion of the Court referred to in Articles 63 [1], 64 [2], 67 [3] and 80 [4] of the Agreement the Court may, if requested, order the payment of damages or compensation according to Articles 68 [5] and 32(1)(f) [6] of the Agreement. The amount of the damages or the compensation may be stated in the order or determined in separate proceedings [Rules 125-144] [[-
The determination of the amount of damages ordered for the successful party may be the subject of separate proceedings. The determination shall include the determination of the amount of compensation, if any, to be awarded as a result of the provisional protection conferred by a published European patent application [Article 32(1)(f) of the Agreement, Article 67 EPC] and compensation to be paid pursuant to Rules 118.1, 198.2, 213.2 and 354.2. The expression “damages” used in Chapter 4 shall be deemed to include such compensation and interest at the rate and for the period that the Court shall decide.

Agreement Article 63 - Permanent injunctions
Where the successful party wishes to have the amount of damages determined, it shall no later than one year from service of the final
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[1-
(1) Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement. The Court may also grant such injunction against an intermediary whose services are being used by a third party to infringe a patent.
(2) Where appropriate, non-compliance with the injunction referred to in paragraph 1 shall be subject to a recurring penalty payment payable to the Court.

[2-
(1) Without prejudice to any damages due to the injured party by reason of the infringement, and without compensation of any sort, the Court may order, at the request of the applicant, that appropriate measures be taken with regard to products found to be infringing a patent and, in appropriate cases, with regard to materials and implements principally used in the creation or manufacture of those products.
(2) Such measures shall include:
(a) a declaration of infringement;
(b) recalling the products from the channels of commerce;
(c) depriving the product of its infringing property;
(d) definitively removing the products from the channels of commerce; or
(e) the destruction of the products and/or of the materials and implements concerned.
(3) The Court shall order that those measures be carried out at the expense of the infringer, unless particular reasons are invoked for not doing so.
(4) In considering a request for corrective measures pursuant to this Article, the Court shall take into account the need for proportionality between the seriousness of the infringement and the remedies to be ordered, the willingness of the infringer to convert the materials into a non- infringing state, as well as the interests of third parties.

[3-
(1) The Court may, in response to a justified and proportionate request of the applicant and in accordance with the Rules of Procedure, order an infringer to inform the applicant of:
(a) the origin and distribution channels of the infringing products or processes;
(b) the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products; and
(c) the identity of any third person involved in the production or distribution of the infringing products or in the use of the infringing process.
(2) The Court may, in accordance with the Rules of Procedure, also order any third party who:
(a) was found in the possession of the infringing products on a commercial scale or to be using an infringing process on a commercial scale;
(b) was found to be providing on a commercial scale services used in infringing activities; or
(c) was indicated by the person referred to in points (a) or (b) as being involved in the production, manufacture or distribution of the infringing products or processes or in the provision of the services,
to provide the applicant with the information referred to in paragraph 1.

[4-
The Court may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of information concerning the Court’s decision, including displaying the decision and publishing it in full or in part in public media.

[5-
(1) The Court shall, at the request of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in a patent infringing activity, to pay the injured party damages appropriate to the harm actually suffered by that party as a result of the infringement.
(2) The injured party shall, to the extent possible, be placed in the position it would have been in if no infringement had taken place. The infringer shall not benefit from the infringement. However, damages shall not be punitive.
(3) When the Court sets the damages:
(a) it shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the injured party by the infringement; or
(b) as an alternative to point (a), it may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of the royalties or fees which would have been due if the infringer had requested authorisation to use the patent in question.
(4) Where the infringer did not knowingly, or with reasonable grounds to know, engage in the infringing activity, the Court may order the recovery of profits or the payment of compensation.

[6-
(1) The Court shall have exclusive competence in respect of:
(f) actions for damages or compensation derived from the provisional protection conferred by a published European patent application;