Rights to prohibit counterfeiting
Material element: acts of counterfeiting
The holder may then prohibit any act, in the territories of the States participating in the enhanced cooperation, which would be covered by the unitary patent (Article 5 of regulation 1257/2012) as :
- direct counterfeiting (Article 25 of theJUB agreement) :
- patented product:
- manufacture, offer, placing on the market, use of a product which is the subject of the patent,
- import, possession of this product for these purposes;
- patented process:
- use of the process which is the subject of the patent
- offer of use, when the third party knows or should have known that the use of the process is prohibited without the consent of the patent owner;
- product obtained by a patented process:
- offer, place on the market, use or import or hold for these purposes a product obtained directly by a process which is the subject of the patent.
- patented product:
- indirect counterfeiting (Article 26 of theJUB agreement), as :
- provision of means:
- supply or offer to supply, in the territory of the Contracting Member States in which the patent takes effect, to a person other than that authorized to exploit the patented invention, means of implementing, in this territory, this invention relating to an essential element of it, when the third party knows, or should have known, that these means are suitable and intended for this implementation.
- provision of means:
It is really the spirit of a standardization (article 5 of regulation 1257/2012).
Exceptions and absence of counterfeiting
Exceptions to section 27
However, certain acts are not considered to be counterfeits (Article 27 of theJUB agreement) :
- acts performed in a private setting and for non-commercial purposes;
- acts performed on an experimental basis which relate to the subject of the patented invention;
- the use of biological material to create or discover and develop other plant varieties;
- medicinal products (veterinary or human) containing known products but not yet associated with a therapeutic use (Article 13 (6) of the directive 2001/82 / CE or Article 10 (6) of the directive 2001/83 / EC) ;
- the preparation of medicines made by pharmacies, on medical prescription;
- the use of the patented invention on board ships of member countries of the Paris Union or members of the WTO other than the Contracting Member States in which the patent concerned takes effect, in the body of the said ship, in the machines, tackle, equipment and other accessories, when these ships temporarily or accidentally enter the waters of a Contracting Member State in which the patent concerned takes effect, provided that the said invention is used exclusively for the needs of the ship;
- the use of the patented invention in the construction or operation of air or land-based locomotives or other means of transport from member countries of the Paris Union or members of the WTO other than the contracting member states in which the patent concerned takes effect, or accessories thereof, when these enter temporarily or accidentally into the territory of a Contracting Member State in which the patent concerned takes effect;
- the acts provided for in Article 27 of the Convention on international civil aviation of December 7, 1944 (ie aircraft, spare parts, etc.), when these acts relate to aircraft from a country party to the said Convention other than a Contracting Member State in which this patent takes effect;
- the use by a farmer of the product of his harvest for reproduction or multiplication on his own farm, provided that the plant reproductive material has been sold or marketed in another form to the farmer by the patent holder or with his consent for agricultural purposes. The extent and conditions of such use correspond to those laid down in Article 14 of the Regulation (EC) No 2100/94 ;
- the use by a farmer of livestock protected for agricultural use, provided that the farm animals or other animal reproductive material have been sold or marketed in another form to the farmer by the patent holder or with his consent . Such use includes the provision of the animal or other animal reproductive material for the pursuit of the agricultural activity of the farmer, but not the sale thereof within the framework or for the purpose of an activity commercial reproduction;
- the acts and use of the information obtained as authorized under Articles 5 and 6 of the directive 2009/24 / EC, in particular by its provisions relating to decompilation and interoperability; and
- acts authorized under section 10 of the directive 98/44 / EC (reproduction or multiplication of biological material).
Previous personal possession
Section 28 of theJUB agreement provides an exception for cases of prior personal possession.
If a person had benefited from an earlier personal possession exception on the basis of a national patent (looking at national law), then this same right is granted in the territory of this member state, for a unitary patent.
Exhaustion of rights
Section 29 of theJUB agreement provides an exception in the event of exhaustion of rights.
Indeed, if a product has been introduced on the European market with the consent of the holder, the latter cannot oppose its circulation within the Union.
As we can notice, and contrary to French law for example, no proof of knowledge of the part is required on the part of the alleged infringer for a large number of acts (article 25 of theJUB agreement).
In truth, only the offer to use a process constitutes an infringement on the sole condition that “thehe third party knew or should have known that the use of the process is prohibited without the consent of the patent owner "(Article 25 of theJUB agreement).
Likewise, the provision of means will require that " the third party knew, or should have known, that these means are suitable and intended for this implementation "(Article 25 of theJUB agreement).
In all other cases, the good faith of the infringer is ineffective.
Law applicable to these rights
It is quite strange to note that article 5.3 together article 7.1 of the regulation 1257/2012 provides that the acts that the holder may prohibit are defined by national laws…
This is strange since, as we have seen, theJUB agreement exactly defines these acts (and these exceptions).
What national law?
But suppose ... what national law?
The national law which will apply is the national law of the Member State, on the date of filing of the European patent application):
- where the applicant had his domicile or his principal establishment;
- or, if this did not apply, where the applicant had an establishment.
In the event of a plurality of applicants, we try to apply the first point to the applicants in the order of appearance, then the second point to the applicants in the order of appearance (article 7.2 of regulation 1257/2012).
If we still don't succeed, we take German law (article 7.3 of the regulation 1257/2012).
Is the JUB agreement national law?
Another way of looking at the subject is to consider that theJUB agreement is an integral part of the national law of each member state.
Therefore, the provisions on acts that can be prohibited are those present in theJUB agreement.
I'm not sure if this is far fetched ... but it has the advantage of making the puzzle work ...
Different rights between a national patent and a unitary patent?
As we saw earlier, the rights conferred by a unitary patent are defined largely by theJUB agreement (ie acts of counterfeiting, exceptions, etc.).
We are talking about the same rights and effects… we are not saying that it must be similar, at least as great, etc. : the same …
We saw the difficulty here: if these are the same rights and same effects, the list of rights mentioned above must be strictly identical in each national law.
And we know that this is not (yet) true ...