The take-aways:
1. right of prior use: national law applies
2. step-by-step action: obligation to render accounts in the infringement proceedings, examination of the books in the enforcement proceedings
3. The recall in title proceedings, the removal in tje enforcement proceedings
4. delayed action must be made up for with subsequent application for extension of time limit.
In the words of the Düsseldorf Local Chamber (decision of 3 July 2024 case UPC_CFI7/2023 – Kaldewei./. Bette) this reads:
1. in the context of Art. 28 UPCA, the user of the technology according to the invention can only rely on the rights granted to him by the respective national regulations of the respective contracting member states. On this basis, the existence of a right of prior use must be plead for each of the protected contracting states.
2. the right of prior use provided for in Art. 68 UPCA in conjunction with R. 131.1 (c) and R. 141 of the Rules of Procedure is part of the procedure for determining the amount of damages ordered.
and, if applicable, precedes the quantified claim for damages. There is therefore no obligation to disclose the books in the infringement proceedings.
3. art. 68 para. 3 (a), (b) UPCA in conjunction with R. 191 p. 1 Alt. R. 191 S. 1 Alt. 2 VerfO provide a substantive entitlement to request information already in the infringement proceedings which the plaintiff needs in order to be able to check the reliability 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 of disclosure, also request documentary evidence for the information pursuant to Art. 67 (1) UPCA, namely invoices or, if these are not available, alternatively delivery notes.
4 The permanent removal from the distribution channels is a separate measure, to be distinguished 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.
5. an application for a retrospective extension of the time limit must be filed at the latest at the same time as the substantive submission for which the party is seeking the retrospective extension of the time limit. If such an application is filed subsequently, it has no prospect of success from the outset.