- within Privacy topic(s)
Key takeaways
Injunctions are not subject to the five-year limitation period under Art. 72 UPCA — no time bar applies to injunctive relief.
Art. 72 UPCA caps only claims for financial compensation. The deadline runs five years from the moment the claimant learns of the last infringing act. Injunctions, by contrast, look to the future, so this limit never reaches them. Where the defendant cannot prove earlier knowledge, the clock starts at the first identifiable moment of awareness — here, a 2021 test purchase.
Forfeiture (Verwirkung) does not apply where the limitation period under Art. 72 UPCA has not yet expired — both the temporal and circumstantial elements must be independently satisfied.
Neither the UPCA nor the Rules of Procedure regulate forfeiture. Instead, Art. 24(1)(e) UPCA may open the door to national doctrines such as § 242 BGB. Yet, so long as the limitation period still runs, the temporal element is missing. Nor could the defendants point to anything suggesting that the claimant would hold back from enforcing its rights.
A commercial relationship between related entities does not amount to the patent proprietor’s implied consent to patent use under Art. 25(a) UPCA — and certainly not for supplies to third parties.
Dealings between a claimant’s subsidiary and a defendant prove little. Such contact does not show that the proprietor consented to use of its patent. Even if consent existed, it would cover only those specific deliveries. It would never stretch to the defendant’s open-market sales. Moreover, once the claimant orders its subsidiary to stop procuring the parts, any remaining basis for ongoing consent disappears.
A newly founded entity is not automatically liable as de facto successor to a liquidated company — concrete factual evidence of succession is required.
The claimant cast the second defendant as the successor to a liquidated entity behind the earlier infringement. The Court disagreed. The two firms were separate legal persons. Shared ownership and close timing, taken together, still fell short of the certainty a finding of liability demands. In the end, no concrete infringing act by the second defendant emerged.
Replacing a component that exclusively embodies the inventive concept is re-manufacture, not repair — exhaustion under Art. 29 UPCA does not cover such replacement.
The Court drew on the settled UPC repair/re-manufacture distinction. Where the swapped part carries the entire characterising inventive concept, its replacement re-creates the invention’s technical and economic advantages. This holds true even when the part qualifies as a wear component due for periodic replacement. Consequently, exhaustion from the original sale of the overall system does not reach that replacement.
Division
Local Division Düsseldorf
UPC number
UPC_CFI_811/2024
Type of proceedings
Main infringement action
Parties
Claimant: Evac Oy
vs.
Defendant 1: Shanghai VacDrain Vacuum Drainage Equipment Co., Ltd.
Defendant 2: VD Solutions GmbH
Defendant 3: Mr. Yong Cao
Patent(s)
EP 1 840 282 B1
EP 1 813 734 B1
Jurisdictions
Germany, Finland, France, Italy, Netherlands
Body of legislation / Rules
Art. 25(a) UPCA, Art. 26(1) UPCA, Art. 29 UPCA, Art. 24(1)(e) UPCA, Art. 63(1) UPCA, Art. 64(2)(b), (d), (e) UPCA, Art. 67 UPCA, Art. 68(1) UPCA, Art. 69(2) UPCA, Art. 72 UPCA, Art. 82(4) UPCA, R. 19 RoP, R. 19.1(a) RoP, R. 19.1(b) RoP, R. 19.7 RoP, R. 118.5 RoP, R. 118.8 RoP, R. 119 RoP, R. 354.4 RoP
Evac Oy v Shanghai VacDrain – LD Duesseldorf
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.
[View Source]
