A guide to the UPC and the UP - Flipbook - Page 114
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The Court will also apply the Union’s competition law. Art.42(2) UPCA specifically states that the
Court must ensure that the rules, procedures and remedies are used in a fair and equitable
manner, and do not distort competition. 9 Under Union competition law, all agreements
between undertakings, decisions by associations of undertakings and concerted practices which
may affect trade between Member States and which have as their object or effect the restriction
or distortion of competition within the internal market are prohibited as incompatible with the
internal market. 10 In addition, abuse of a dominant market position is prohibited. 11 The Unitary
Patent Regulation is also stated to be without prejudice to the application of competition law
and the law relating to unfair competition. 12 Therefore, for example, the question of whether
the assertion of standard-essential patents (SEPs) is considered to be an abuse of a dominant
position can be raised before the Court due to Union competition law. In this context, the CJEU’s
ruling in Huawei v ZTE 13 should be noted, where this “antitrust defence” was raised. In a nutshell,
the CJEU ruled that the proprietor of an SEP who has given an irrevocable commitment to grant
a licence on fair, reasonable and non-discriminatory (FRAND) terms does not abuse its
dominant position by bringing an action for an injunction as long as it complies with certain
requirements prior to bringing the action. Accordingly, the SEP holder has to: (1) alert the
alleged infringer by designating the patent and specifying its infringement; and (2) present a
written offer for a licence on FRAND terms, specifying in particular the royalty and its
calculation, to the alleged infringer once the latter has expressed its willingness to conclude
such a licensing agreement. In addition, there will be no abuse in bringing an action claiming
injunctive relief where the alleged infringer continues to use the patent and did not diligently
respond to the SEP holder’s offer. 14
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It should be noted that some of the provisions in the Unitary Patent Regulation and the
Translation Regulation have not been defined. 15 Where this occurs, the CJEU has:
“consistently held that it follows from the need for uniform application of EU law and from the
principle of equality that the terms of a provision of EU law which makes no express reference
to the law of the Member States for the purpose of determining its meaning and scope must
normally be given an autonomous and uniform interpretation throughout the European Union,
having regard not only to its wording but also to the context of the provision and the objective
pursued by the legislation in question”. 16
Unitary Patent Regulation
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9
10
11
12
13
14
15
16
On 17 December 2012, the European Parliament and the Council enacted the Unitary Patent
Regulation. It implements the enhanced cooperation procedure in relation to the creation of
Unitary patent protection and is thus a cornerstone of the Unitary Patent Package.
art.42(2) UPCA.
art.101 TFEU.
art.102 TFEU.
art.15 Unitary Patent Regulation.
Huawei Technologies Co Ltd v ZTE Corp et al. (C-170/13) ECLI:EU:C:2015:477. Note that the CJEU issued a rectification order,
clarifying that the SEP holder has to comply with both requirements before bringing an action (C-170/13 REC)
ECLI:EU:C:2015:817.
For further details see chapter 15 (Remedies) paragraphs 15-13 to 15-17.
For example, “residence”, “principal place of business” and “place of business” in art.7 Unitary Patent Regulation.
Hummel Holding A/S v Nike Inc. (C-617/15) ECLI:EU:C:2017:390 at [22].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 104
