Rights Conferred by a Unitary Patent

Right to Prohibit Infringement

Material Element: Acts of Infringement

The proprietor may prohibit any act, in 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 Agreement on a Unified Patent Court):
  • patented product:
    • making, offering, placing on the market, or using a product which is the subject matter of the patent,
    • importing or stocking the product for such purposes;
  • patented process:
    • using the process which is the subject matter of the patent,
    • offering 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 such purposes a product obtained directly by a process which is the subject matter of the patent.
• indirect infringement (Article 26 of the Agreement on a Unified Patent Court), such as:
  • supply of means:
    • supplying or offering to supply, in 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, means relating to an essential element of that invention, for putting it into effect therein, where 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 infringement (Article 27 of the Agreement on a Unified Patent Court):

• 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 members of the WTO 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 the 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 members of the WTO other than the Contracting Member States in which the patent concerned has effect, or of accessories to such aircraft or vehicles, when these 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 that 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 laid down 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 UPC Agreement provides for an exception in cases of prior personal possession.

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

Exhaustion of rights

Article 29 of the UPC Agreement 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 cannot 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 UPC Agreement).

In fact, only the offering of use of 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 UPC Agreement).

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

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

Challenges

Applicable law to these rights

National law?

It is rather odd 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 odd since, as we have seen, the UPC Agreement 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 its 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 matter, German law is applied (Article 7(3) of Regulation 1257/2012).

Is the UPC Agreement national law?

Another way of looking at the matter is to consider that the UPC Agreement 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 UPC Agreement.

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 the UPC (i.e., acts of infringement, exceptions, etc.).

However, A2 EPC and A64 EPC provide that an EP patent (and thus a unitary patent) has the same effects and confers the same rights on its proprietor as a national patent.

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

We 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) true…

What fundamentally distinguishes the unitary patent from a bundle of national validations is its unitary character: it is all or nothing.

Uniform protection

The unitary patent ensures uniform protection and produces an equal effect in all participating Member States (Article 3(2) of Regulation 1257/2012). The proprietor has the same rights throughout the covered territory to prohibit infringement (Article 5(1) and (2) of the same regulation; see details on the page Rights conferred by a unitary patent).

Indivisible: all or nothing

Corollary of the unitary character: the unitary patent can only be limited, transferred, revoked, or lapse in respect of all participating Member States (Article 3(2) of Regulation 1257/2012).

It is therefore not possible to abandon a unitary patent « in only half of the countries » to save on official fees, nor to assign it country by country. A single exception to this block logic: the license, which may be granted for all or part of the territory. One can thus lease in parts what can only be sold as a whole.

Which law defines these effects?

Legal subtlety: the regulation refers, to define the acts that the proprietor may prohibit, to the national law applicable under Article 7 (Article 5(3) of Regulation 1257/2012) — a national law that the participating States have precisely harmonized through Articles 25 to 30 of the Agreement on the UPC. The loop is closed: see The applicable national law.