What to do to get ready for the Unitary Patent and UPC
19th December 2022
The Unified Patent Court (UPC) will deal with the infringement and validity of Unitary Patents. The rulings of the UPC will apply to member states that have ratified the Agreement on a Unified Patent Court (UPC Agreement). The provisions of the UPC agreement which deals with direct infringement are provided in Article 25 which gives the patentee the right to prevent any third party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or storing the product for those purposes;
(b) using a process which is the subject matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect;
(c) offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject matter of the patent.
The provisions of the UPC agreement which deals with indirect infringement are provided in Article 26 which gives the patentee the “right to prevent any third party not having the proprietor's consent from supplying or offering to supply, within the territory of the Contracting Member States in which that patent has effect, any person other than a party entitled to exploit the patented invention, with 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 those means are suitable and intended for putting that invention into effect”.
Article 27 specifies certain limitations where the rights conferred by a patent shall not extend. Notably, the rights conferred by a UP does not extend to acts done privately and for non-commercial purposes. Also the rights do not extend to acts done for experimental purposes.
The concept of exhaustion of rights is provided in Article 29 which states “the rights conferred by a European patent shall not extend to acts concerning a product covered by that patent after that product has been placed on the market in the European Union (EU) by, or with the consent of, the patent proprietor, unless there are legitimate grounds for the patent proprietor to oppose further commercialisation of the product”. The doctrine of exhaustion of rights essentially means that if goods were placed on the market in a particular EU member state, any patent rights associated with these goods were exhausted. In other words, patent rights cannot be used to stop the goods being sold or redistributed in another EU member state.
Unitary Patents can be subjected to compulsory licence. Compulsory licences for European patents with unitary effect will be governed by the laws of the participating Member States as regards their respective territories (see Recital 10 Regulation (EU) No 1257/2012).
The main feature of the Unitary Patent is that it provides unitary character by providing uniform protection and having equal effect in all the participating Member States. Accordingly, the Unitary Patent confers on its proprietor the right to prevent any third party from committing acts against which the patent provides protection. In the existing system, national courts are responsible for deciding on the infringement and validity of European patents. Currently, if the patentee wants to enforce a European patent in a number of countries it is necessary to litigate in several countries which can be very expensive. Furthermore, it is not uncommon for the various national courts to arrive at diverging decisions which creates legal uncertainty. It is the intention of the UPC agreement to address these shortcomings by the establishment of the Unified Patent Court which will have exclusive jurisdiction for litigation relating to Unitary Patents. The Unified Patent Court should provide consistency of case-law and hence legal certainty, and cost effectiveness for patent proprietors.
This article continues FRKelly's series on the upcoming Unitary Patent and Unified Patent Court. For more details, check out the following articles:
Further articles will be posted to our UP/UPC page.
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