- with readers working within the Oil & Gas industries
1 Key takeaways
Failure to monitor the patent landscape can establish "reasonable grounds to know", Art. 68(1) UPCA
Under Art. 68(1) UPCA, 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.
An active stakeholder in the industry is at least reasonably
expected to monitor the patent landscape before exhibiting its
product on the market and should have had reasonable grounds to
know about the existence of the patent in dispute and the
infringing nature of the attacked embodiment. Failure to do so was
at least negligent.
General statements are not sufficient to establish a reputational damage
When setting the damages, the Court 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 (Art. 68(3)(a)
UPCA).
Reputational damage mainly based on general statements are not
sufficient to establish a reputational damage due to the
infringement of the attacked embodiment by offering it at a trade
fair.
Request for evidence preservation justified without prior warning letter in urgent situations
An exception to the general rule of Art. 69(1) UPCA may apply if a claimant initiates proceedings without first sending a warning letter and the defendant submits a cease-and-desist undertaking immediately at the beginning of the proceedings. In such a situation, it may be justified to award costs to the defendant on equitable grounds, in particular because the claimant caused unnecessary costs to the defendant and the Court.
However, in the specific case, the application for presevering evidence without sending a prior warning letter did not cause any unnecessary costs to Respondent, considering the urgency and the limited time of seven days of the trade fair and without having sufficient evidence to prove a patent infringement.
2 Division
Court of Appeal
3 UPC number
UPC_CoA_8/2025
4 Type of proceedings
Appeal proceedings
5 Parties
Appellant (Defendant): Bhagat Textile Engineers
vs.
Respondent (Claimant): Oerlikon Textile GmbH & Co KG
6 Patent(s)
EP 2 145 848
7 Body of legislation / Rules
Art. 68 UPCA, Art. 69 UPCA
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.
