# News Detail Share now [](https://www.linkedin.com/uas/login?session_redirect=https%3A%2F%2Fwww.linkedin.com%2FshareArticle%3Fmini%3Dtrue%26url%3Dhttps%3A%2F%2Fwww.hoyngrokhmonegier.com%2Fes%2Fnoticias%2Fdetail%2Fenforcing-upc-decisions-in-practice-from-direct-effect-to-penalties%26title%3DEnforcing%20UPC%20decisions%20in%20practice%3A%20from%20direct%20effect%20to%20penalties%26summary%3D "Linkedin") # Enforcing UPC decisions in practice: from direct effect to penalties 11 junio 2026 News Unified Patent Court (UPC) Hot Topic Publication Enforcement before the UPC starts from a simple premise: the UPC decision itself is the enforcement title. Article 82(1) UPCA provides that decisions and orders of the Court are enforceable in any Contracting Member State, without exequatur or any further domestic recognition step. The order for enforcement is appended to the decision itself. The framework around this principle of direct enforceability has been progressively developed by the Court of Appeal, notably in Sumi Agro v Syngenta (UPC\_CoA\_523/2024), *Boehringer Ingelheim v Zentiva* (UPC\_CoA\_446/2025) and *Fujifilm v Kodak* (UPC\_CoA\_699/2025). In practice, UPC enforcement raises three distinct sets of questions: the decision to enforce final decisions on the merits under Rule 118.8 RoP, the direct enforceability of provisional measures under Art. 62 UPCA, and the consequences of non-compliance under the UPC's penalty regime under Art. 82(4) UPCA. ##### **Territorial reach** Art. 34 UPCA defines the territorial scope of UPC decisions. In the case of a European patent, decisions of the Court cover the territory of those Contracting Member States for which the patent has effect. For a unitary patent, this is the territory covered by the unitary effect at the date of registration. For a classical bundle European patent, the decision covers only those CMS in which the patent has been validated and is in force, and only to the extent relief for these CMS was requested by the claimant. The Court of Appeal has applied this provision broadly. In *Sumi Agro v Syngenta* (UPC\_CoA\_523/2024), the CoA held that, as a rule, an injunction will cover the territory of all CMS in which the patent has effect, unless specific circumstances justify a different conclusion. *Boehringer Ingelheim v Zentiva* (UPC\_CoA\_446/2025) illustrates the practical reach of this principle. Zentiva had completed the Portuguese pricing-and-reimbursement procedure for a generic of Boehringer's nintedanib (Ofev®) and held a marketing authorisation only in Portugal. The CoA nevertheless granted a preliminary injunction covering the full UPC territory, holding that the absence of marketing authorisations in the other CMS did not affect the Art. 34 analysis. The territorial scope of the order accordingly follows the territorial reach of the patent rather than the current commercial position of the defendant. ##### **Enforcement under Rule 118.8** While Art. 82(1) UPCA establishes the principle of direct enforceability, Rule 118.8 RoP sets out the procedural conditions for enforcing a decision on the merits. The claimant must notify the Court of which parts of the order it intends to enforce, provide certified translations of those orders into the language of the Contracting Member State of enforcement where applicable, and have the notice and translation served on the defendant by the Registry. The Court of Appeal addressed two practical aspects of this procedure in *Fujifilm v Kodak* (UPC\_CoA\_699/2025). As regards service, the CoA confirmed that R. 118.8 does not require service by a bailiff or by post; making the notice available to the defendant's representative through the Court's Case Management System is sufficient. As regards translation, the CoA held that orders enforced through the possible forfeiture of a UPC penalty do not require translation under R. 118.8. The reasoning is functional: the translation requirement exists in order to enable the national enforcement authority (typically a bailiff) to read the order to be enforced. Where enforcement takes place within the UPC through its own penalty mechanism, this rationale does not apply. A pan-CMS injunction backed by a UPC penalty may therefore, where enforcement is limited to the UPC penalty mechanism, be enforced in the language of the proceedings alone, without certified translations into the languages of the Contracting Member States concerned. Rule 118.8 applies only to final decisions on the merits. It does not extend to provisional measures, which become enforceable from service of the order by the Court, subject to any security ordered, without any separate enforcement notice. Nor does Rule 118.8 govern the consequences of non-compliance with a UPC order. Those questions are addressed by the autonomous penalty regime under Art. 82(4) UPCA and Rule 354 RoP. The developing case law on penalties has clarified a number of important issues, including the requirements for imposing penalties, the appealability of penalty orders, the recoverability of costs incurred in penalty proceedings and the repayment of penalties where the underlying decision is later set aside. ##### **The penalty track** The first of these issues was addressed by the CoA in *Fujifilm v Kodak* itself. In the first instance decision, the LD Mannheim (UPC\_CFI\_365/2023) had provided for penalties only in relation to the injunction, but not for the information and accounting obligations. When Fujifilm later sought penalties for alleged non-compliance with those obligations, the LD initially imposed a lump sum and daily penalties. The CoA, however, set the penalty order aside, holding that penalties cannot be imposed at the enforcement stage unless the relevant obligation was already backed by a penalty provision. Accordingly, Fujifilm had to file a further application for such penalty orders, thereby allowing the LD to proceed on a corrected procedural basis. The amounts awarded so far demonstrate the flexibility of the UPC's penalty regime. They range from relatively modest sums, as in *myStromer v Revolt Zycling* (LD Düsseldorf, UPC\_CFI\_177/2023), to six-figure penalties in *10x Genomics v NanoString* (LD Munich, UPC\_CFI\_2/2023) and *Insulet v EOFlow* (CD Milan, UPC\_CFI\_1167/2025). In *Fujifilm v Kodak*, the LD also relied on escalating daily penalties, illustrating the UPC's willingness to increase pressure where non-compliance persists. ##### **Appeals and costs** Once a penalty order is in place, the obvious question is what remedies are available against it. In *Insulet v EOFlow* (UPC\_CoA\_930/2025), the CoA confirmed that penalty orders do not fall within the category of decisions automatically appealable under Art. 73 UPCA and Rule 220.1 RoP. An appeal requires leave, which must first be sought from the CFI (Rule 220.2 RoP); only if leave is refused may the party request discretionary review before the CoA (Rules 220.3 and 220.4 RoP). Another developing area concerns the costs of penalty proceedings. In *EOFlow v Insulet* (UPC\_CFI\_773/2025), the CD Milan held that enforcement-related costs do not fall within Rule 151 RoP but may nevertheless be recoverable under the general cost principle of Art. 69 UPCA. Important questions remain open, however, particularly regarding the underlying value in dispute and the resulting cost ceilings. The Court also indicated that proportionality affects not only *whether* costs are recoverable, but also their amount, reducing recoverability where later stages of the proceedings were considered less complex and largely repetitive. ##### **Repayment** Finally, *10x Genomics v NanoString* illustrates another area where UPC practice is still developing: the repayment of penalties. A penalty of EUR 100,000 was initially imposed for non-compliance with a preliminary injunction. The injunction was subsequently overturned by the CoA (UPC\_CoA\_335/2023), raising the question whether penalties already paid should be returned. Commentary literature, including Tilmann/Plassmann, considers repayment possible but not necessarily automatic, pointing to the sanction-like character of penalties. In the *10x Genomics v NanoString* case, the penalty was in fact repaid following a request by the defendants to the court. Whether a more consistent UPC approach to repayment will emerge remains to be seen. The UPC's enforcement framework is therefore gradually taking shape, but a number of important questions remain open. The Court of Appeal has clarified the territorial scope of decisions, the procedural conditions for enforcement under Rule 118.8 RoP, and the basic principles of the penalty regime. The rules on appeals, costs and repayment of penalties remain the next areas in which UPC enforcement practice is likely to develop. By [Olivier Catania](https://www.hoyngrokhmonegier.com/es/our-team/legal-experts/olivier-catania) and [Moritz Voiß](https://www.hoyngrokhmonegier.com/es/our-team/legal-experts/moritz-voiss).