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A guide to the UPC and the UP - Flipbook - Page 464

The Court’s Procedure for Giving a Decision Confirming Settlement
22-23 When the parties conclude a dispute by way of settlement, they shall inform the judgerapporteur that they have reached a settlement. 31 As discussed above, 32 this does not prevent
the parties from settling a dispute and simply withdrawing the action. However, where the
parties inform the Court that they have settled their dispute, the Court will then confirm the
settlement by way of a decision. 33 Like all other decisions of the Court, this will be publicly
available and enforceable in all of the Contracting Member States.
22-24 The parties may request that the confirmation contains the terms of the settlement 34 and/or
that the Court orders that the details of the settlement are confidential. 35 The practical
implications of making either of these requests are considered above. 36 However, where
the parties do not request that the decision confirming settlement contains the terms of the
settlement and/or that the decision is confidential, it seems likely that the decision will be very
similar to one given where a claimant decides to withdraw its claim. In this situation, the Court
will give a decision declaring that the proceedings are closed. 37
22-25 Subject to any order relating to confidentiality of the details of a settlement, the Court’s
settlement decision shall be recorded on the register. 38 Again, the practical implication appears
to be that, if the parties request that the decision does not contain the terms of the settlement,
the position will be the same as if a claim is withdrawn. 39
22-26 If the terms of the settlement are silent regarding the costs incurred by the parties, the judgerapporteur has a discretion to give a decision regarding costs. Alternatively, the parties may
agree and set out the costs to be awarded in the terms of the settlement agreement, or request
the Court to decide on costs in accordance with the normal procedure. 40
Terms and Binding Effect of a Settlement Agreement
22-27 The RoP mean that there are various considerations relating to the terms of a settlement
agreement settling a Unitary patent dispute that need to be considered in order to achieve
the desired effect. This is particularly so in order to give a settlement binding effect.
Agreements to Limit, Surrender or Revoke a Patent
22-28 Art.79 UPCA states that a patent may not be revoked or limited by way of settlement. However,
r.11(2) RoP allows the Court to confirm any terms in a settlement agreement including terms
obliging the patent owner to limit, surrender or agree to the revocation of a patent or not to
assert it against the other party and/or a third party. At first sight, it appears that r.11(2) RoP
may be inconsistent with art.79 UPCA but it, in fact, distinguishes two slightly different concepts.
A patent proprietor is free to apply to the Court or EPO to limit, surrender or agree to
revocation of its patent, 41 and, therefore, r.11(2) RoP provides that a settlement may contain
terms where a patent proprietor is obliged, as part of the settlement to apply to limit, surrender
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r.365(1) RoP.
See paragraph 22-17.
r.365(1) RoP.
r.11(2) RoP.
r.365(2) RoP.
See paragraphs 22-18 to 22-22.
r.265(2)(a) RoP.
rr.365(2) and (3) RoP.
r.265(2)(b) RoP.
r.11(2) RoP states that rr.150 to 156 RoP apply mutatis mutandis. See chapter 20 (Court Fees and Recoverable Costs) for
further details regarding costs.
art.105a EPC.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 454