IP Quick Tip: Period of limitation under the UPC Agreement

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Welcome to today’s IP Quick Tip on the period of limitation under the Agreement on a Unified Patent Court and possible interpretations of the new legal framework.

Let us have a brief look at Article 72 UPCA:

First, the provision on the period of limitation refers to Art. 24 UPCA, which relates to the sources of law on which the Unified Patent Court is to base its decisions. Here, the key question is whether national law on the period of limitation is applicable in addition and, if so, to what extent.

There seem to be two possible interpretations of the introductory reference:

Either a supplementary application of national law – an approach of ”filling the gap”, as it were: This would mean that national law is applicable only concerning further details which are not answered by the UPCA (which means, for example, national provisions on the interruption or suspension of limitation).

Or a general additional application of national law, in that national law is applicable in addition to Art. 72 UPCA if the relevant national provision would result in a shorter limitation period.

In proceedings for bundle patents and even more so for unitary patents, many national provisions, which are not harmonized, are potentially applicable. Therefore, it appears preferable to interpret the situation such that national limitation law is also applicable if the underlying claim originates from national law.

Second, the UPCA refers to “actions relating to all forms of financial compensation”. This includes regular actions for the award of damages. Non-financial claims, such as claims for injunctive relief are not subject to this restriction.

Third, when the UPCA stipulates that such actions “may not be brought”, this can either be understood to mean that an action would be inadmissible in the first place or – as is the case under German national law – that the defendant has to raise a corresponding objection.

The case-law of the UPCA will have to establish a consistent practice.

In any case, in the early stages of the UPC system, it is certainly advisable to raise the corresponding objection.

Finally, concerning the specific duration of the period of limitation, the UPCA provides for five-year period. The specific calculation is to be carried out according to the corresponding provisions in the Rules of Procedure for every single act of infringement.

In contrast to German national law, the UPCA uses the knowledge of the applicant and not that of the creditor as a basis.