Accueil Unitary Patents Rights Conferred by a Unitary Patent

Rights Conferred by a Unitary Patent

Right to Prohibit Infringement

Material Element: Acts of Infringement

The proprietor may prohibit any act, within the territories of the participating Member States of the enhanced cooperation, that would be covered by the patent with unitary effect (Article 5 of Regulation 1257/2012) such as:

  • direct infringement (Article 25 of the UPC Agreement):
    • patented product:
      • manufacture, offering, placing on the market, use of a product which is the subject matter of the patent,
      • importation, stocking of such product for these purposes;
    • patented process:
      • use of the process which is the subject matter of the patent,
      • offering of the use of the process, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor;
    • product obtained by a patented process:
      • offering, placing on the market, using, or importing or stocking for these purposes a product obtained directly by a process which is the subject matter of the patent.
  • indirect infringement (Article 26 of the UPC Agreement), such as:
    • supply of means:
      • supply or offer to supply, within the territory of the Contracting Member States in which the patent has effect, to a person other than a person entitled to exploit the patented invention, of means relating to an essential element of that invention for putting it into effect therein, when the third party knows, or should have known, that such means are suitable and intended for putting that invention into effect.

This truly reflects the spirit of harmonization (Article 5 of Regulation 1257/2012).

Exceptions and Non-Infringement

Exceptions under Article 27

Nevertheless, certain acts are not considered infringements (Article 27 of the UPC Agreement):

  • acts done privately and for non-commercial purposes;
  • acts done for experimental purposes relating to the subject matter of the patented invention;
  • the use of biological material for the purpose of breeding or discovering and developing other plant varieties;
  • veterinary or human medicinal products containing known products but not yet associated with a therapeutic use (Article 13(6) of Directive 2001/82/EC or Article 10(6) of Directive 2001/83/EC);
  • the extemporaneous preparation of medicines by pharmacies on the basis of a medical prescription;
  • the use of the patented invention on board vessels of countries of the Paris Union or WTO Members other than the Contracting Member States in which the patent concerned has effect, in the body of said vessel, in the machines, tackle, gear, and other accessories, when such vessels temporarily or accidentally enter the waters of a Contracting Member State in which the patent concerned has effect, provided that such invention is used exclusively for the needs of the vessel;
  • the use of the patented invention in the construction or operation of aircraft or land vehicles or other means of transport of countries of the Paris Union or WTO Members other than the Contracting Member States in which the patent concerned has effect, or of accessories to such aircraft or vehicles, when such aircraft or vehicles temporarily or accidentally enter the territory of a Contracting Member State in which the patent concerned has effect;
  • the acts specified in Article 27 of the Convention on International Civil Aviation of 7 December 1944 (i.e., aircraft, spare parts, etc.), when such acts concern aircraft of a country party to the said Convention other than a Contracting Member State in which the patent has effect;
  • the use by a farmer of the product of his harvest for propagation or multiplication by him on his own farm, provided that the plant propagating material was sold or otherwise commercialized to the farmer by the patent proprietor or with his consent for agricultural use. The extent and conditions of such use shall be as set out in Article 14 of Regulation (EC) No 2100/94;
  • the use by a farmer of protected livestock for an agricultural purpose, provided that the breeding stock or other animal reproductive material was sold or otherwise commercialized to the farmer by the patent proprietor or with his consent. Such use includes making the animal or other animal reproductive material available for the purposes of pursuing the farmer’s agricultural activity, but not the sale thereof within the framework or for the purpose of a commercial reproduction activity;
  • the acts and use of the information obtained as permitted under Articles 5 and 6 of Directive 2009/24/EC, in particular by its provisions on decompilation and interoperability; and
  • the acts permitted under Article 10 of Directive 98/44/EC (reproduction or multiplication of biological material).

Prior personal possession

Article 28 of the Agreement on a Unified Patent Court provides for an exception in cases of prior personal possession.

If a person had benefited from a prior personal possession exception under a national patent (based on national legislation), then the same right is granted within the territory of that Member State for a unitary patent.

Exhaustion of rights

Article 29 of the Agreement on a Unified Patent Court provides for an exception in cases of exhaustion of rights.

Indeed, if a product has been placed on the European market with the consent of the proprietor, the latter may not oppose its circulation within the Union.

Mental element

As we can observe, and contrary to French law for example, no proof of knowledge on the part of the alleged infringer is required for a large number of acts (Article 25 of the Agreement on a Unified Patent Court).

In fact, only the offer to use a process constitutes infringement under the sole condition that « the third party knew or should have known that the use of the process is prohibited without the consent of the patent proprietor » (Article 25 of the Agreement on a Unified Patent Court).

Similarly, the supply of means will require that « the third party knew, or should have known, that these means are suitable and intended for such use » (Article 25 of the Agreement on a Unified Patent Court).

In all other cases, the good faith of the infringer is irrelevant.

Challenges

Applicable law to these rights

National law?

It is rather peculiar to note that Article 5(3) in conjunction with Article 7(1) of Regulation 1257/2012 provides that the acts which the proprietor may prohibit are defined by national laws …

This is peculiar since, as we have seen, the Agreement on a Unified Patent Court precisely defines these acts (and these exceptions).

Which national law?

But let us suppose … which national law?

The national law that will apply is the national law of the Member State, as of the filing date of the European patent application:

  • where the applicant had their domicile or principal place of business;
  • or, if that did not apply, where the applicant had a place of business.

In the case of multiple applicants, the first point is applied 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 this still does not resolve the issue, German law is applied (Article 7(3) of Regulation 1257/2012).

Is the Agreement on a Unified Patent Court national law?

Another way of looking at the matter is to consider that the Agreement on a Unified Patent Court is an integral part of the national law of each Member State.

Thus, the provisions on the acts that may be prohibited are indeed those set out in the Agreement on a Unified Patent Court.

I am not sure whether 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 have seen previously, the rights conferred by a unitary patent are largely defined by the Agreement on a Unified Patent Court (i.e., acts of infringement, exceptions, etc.).

However, Article 2 EPC and Article 64 EPC provide that a European patent (and thus a unitary patent) shall have the same effects and confer the same rights as a national patent on its proprietor.

We are indeed referring to the same rights and effects … it does not say that they must be similar, at least as extensive, etc.: the same …

We can clearly see the difficulty here: if these are the same rights and effects, the list of rights mentioned above must be strictly identical in each national law.

And we know full well that this is not (yet) the case …

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