A guide to the UPC and the UP - Flipbook - Page 116
7-15
These articles were subject to strong criticism from scholars, 28 legal professionals, 29 industry
groups 30 and politicians, 31 who demanded their deletion from the Regulation. Their main
concern was, essentially, the CJEU’s influence on the interpretation of substantive patent law. 32
As the provisions, if included in the Regulation, would become EU law, they could be referred to
the CJEU pursuant to art.21 UPCA and art.267 TFEU. Critics feared lengthy and costly referrals of
questions of substantive patent law to the CJEU and raised concerns regarding the CJEU’s
perceived lack of expertise in substantive patent law issues.
7-16
Eventually, the European Council suggested deleting these articles from the Unitary Patent
Regulation at its summit on 28 and 29 June 2012. 33 Only a few months later, an amended text of
the Unitary Patent Regulation was agreed in an extraordinary meeting of the Committee on
Legal Affairs (JURI). According to this compromise text – proposed by the then-Council
Presidency Cyprus – arts 6 to 8 were deleted from the Unitary Patent Regulation and replaced
by the new art.5 Unitary Patent Regulation. 34 Shortly after, on 11 December 2012, the Unitary
Patent Regulation was adopted by the European Parliament in its current form. 35
Article 5
7-17
Art.5 Unitary Patent Regulation pertains to uniform protection, such principle being located in
Ch.II, relating to the effects of a Unitary patent. As noted in paragraph 7-16, this article was
introduced as a compromise after the deletion of the former arts 6 to 8.
7-18
Art.5(1) Unitary Patent Regulation establishes the principle that the Unitary patent confers
rights, namely the right to prevent any third party from committing acts against which that
patent provides protection. In the light of the former arts 6 to 7, these acts will include direct
and indirect infringement. The patentee’s rights are subject to limitations, as initially provided
for in the former art.8. The details of these rights and limitations are further determined in
art.5(3) Unitary Patent Regulation.
28
29
30
31
32
33
34
35
For example Professor Krasser, see “Effects of an inclusion of regulations concerning the content and limits of the patent
holder’s rights to prohibit in an EU regulation for the creation of unitary European patent protection”: available at
http://blog.ksnh.eu/en/wp-content/uploads/2012/03/Prof-Krasser-opinion-on-EU-Patent.pdf [Accessed 20 May 2023].
Especially the European Patent Lawyers Association (EPLAW) and its President Jochen Pagenberg, see e.g. the EPLAW
Resolution on the Draft Agreement, available at https://media.bardehle.com/contentdocuments/articles/EPLAW_Resolution_
on_United_Patent_Court_27.9.2011.pdf [Accessed 13 April 2023].
For instance the IP Federation see e.g. Policy Paper PP 21/12 on Unitary Patent Protection – arts 6 to 8 of the proposed
Regulation available under https://www.ipfederation.com/policy-papers/?src=21%2F12 [Accessed 13 April 2023].
Particularly Cecilia Wikström: see e.g. her request before the Committee on Legal Affairs from 21 November 2011,
available under http://www.europarl.europa.eu/ep-live/en/committees/video?event=20111121-1500-COMMITTEE-JURI
starting at minute 15:49:30 [Accessed 13 April 2023].
The scope for the CJEU to review issues of substantive patent law has been otherwise limited to issues arising under the EU
Treaties, Regulation (EC) No.2100/94 of 27 July 1994 on Community plant variety rights and Directive 98/44/EC of 6 July 1998
on the legal protection of biotechnological inventions, as well as Regulation (EC) No 1610/96 of 23 July 1996 concerning the
creation of a supplementary protection certificate for plant protection products and Regulation (EC) No 469/2009 of 6 May
2009 concerning the supplementary protection certificate for medicinal products (see chapter 4), even though the latter two
measures, whilst providing a mechanism that has the effect of extending certain patents and also being within the jurisdiction
of the Court are not, strictly speaking, patents.
European Council, 29 June 2012, EUCO 76/12.
Press Release from Cyprus Presidency of the Council of the European Union dated 20 November 2012, “Unitary patent closer
to the finishing line”, available at http://www.cy2012.eu/en/news/press-release-unitary-patent-closer-to-the-finishing-line
[Accessed 13 April 2023].
484 votes against 164 dissenting votes and 35 abstentions, see press release from the European Parliament dated 11
November 2012 available at http://www.europarl.europa.eu/news/en/news-room/content/20121210IPR04506/html/
Parliament-approves-EU-unitary-patent-rules [Accessed 13 April 2023].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 106
