A guide to the UPC and the UP - Flipbook - Page 117
7-19
According to art.5(2) Unitary Patent Regulation, the scope of the right in art.5(1) and its
limitations “shall be uniform in all participating Member States”. This provision was necessary
in order to ensure compliance with the legal basis of the Unitary Patent Regulation, art.118
para.1 TFEU, as this article provides for the “uniform protection of intellectual property rights”.
Member States are thus barred from taking measures that would undermine this uniformity. 36
7-20
Art.5(3) Unitary Patent Regulation is the core provision of this article. It concerns the applicable
law for actions against which the patent provides protection (i.e. the law of infringement,
former arts 6 and 7) as well as the limitations to such protection (former art.8). In legal terms,
strictly speaking, this paragraph is a conflict of law rule since in this case it refers to the
national law of the Contracting Member States rather than specifying an applicable law itself.
The applicable national law is then again determined by art.7 Unitary Patent Regulation which
specifies the national law that applies to a Unitary patent as an object of property. 37 This rather
convoluted formulation of the law applicable to the protection of a Unitary patent 38 is
somewhat confusing but essentially boils down to the provisions of the UPCA as to
infringement being applicable, for the reasons explained below.
7-21
Concerns have been expressed that art.5(3) Unitary Patent Regulation could mean that rights
and limitations regarding a Unitary patent could vary according to differing national rules.
If this were the case, of course, the goal of a uniform patent protection would be jeopardised. 39
However, this is not what is meant by art.5(3). In this regard it is important to notice the exact
wording: it explicitly points to the national law “applicable to the European patent with unitary
effect”. Taking this into account, the Contracting Member States have to apply national law
specifically concerning Unitary patents. Therefore, art.5(3) Unitary Patent Regulation can only
be a reference to the substantive patent law provisions of the UPCA, in particular arts 25 to
27 UPCA, which particularise the rights conferred by a Unitary patent and its limitations.
This is because, once the UPCA came into effect, these provisions became part of the national
law of each Contracting Member State 40 in relation to Unitary patents. This is confirmed by
recital 9 Unitary Patent Regulation, which also refers to the UPCA regarding the rights conferred
by the Unitary patent. Therefore, art.5(3) Unitary Patent Regulation is an indirect way of
referring to the UPCA. This close link between the Unitary Patent Regulation and the UPCA is
also confirmed by the fact that the Unitary Patent Regulation did not apply before the UPCA
entered into force. 41 The UPCA – and also the Unitary Patent Regulation – could only enter into
force after the deposit of the thirteenth instrument of ratification (including Germany, the UK
and France) in accordance with arts 84(2) and 89(1) UPCA. In fact, it entered into force on 1 June
2023, following ratification by Germany on 17 February 2023 being the 17th Contracting
Member State to do so. This system for finding the relevant substantive law is shown in
figure 7-2.
36
37
38
39
40
41
“New Article 5a of the Regulation on Unitary Patent Protection” dated 20 November 2012 available at
https://media.bardehle.com/contentdocuments/articles/NewA5a_UPP_Reg_withExpl.pdf [Accessed 13 April 2023].
For further details on which national law applies see paragraphs 7-27 to 7-32.
Merely repeated rather than explained by the CJEU in Spain v European Parliament & Council (C-146/13)
ECLI:EU:C:2015:298 at [47].
See e.g. Montañá M, “The applicable Law in the UPC: Some Reflections sparked by the OCR” dated 20 April 2015 available at
http://kluwerpatentblog.com/2015/04/20/the-applicable-law-in-the-upc-some-reflections-sparked-by-the-ocr/ [Accessed 13
April 2023]; IPKat “Latest Europatent rumour: is it “bye-bye, infringement?”” dated 19 November 2012 available at
http://ipkitten.blogspot.de/2012/11/latest-europatent-rumour-is-it-bye-bye.html [Accessed 13 April 2023].
See arts 89(1) and 84(2) UPCA.
art.18(2) Unitary Patent Regulation.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 107
