A guide to the UPC and the UP - Flipbook - Page 118
Figure 7-2: Substantive Law Applying to a Unitary Patent
What is the substantive law in
relation to patent infringement?
arts 6 to 8 UPR have been removed
art.5(3) UPK: national law applies to
Unitary patent as an object of property
arts 7(1) and (3) UPR: Unitary patent is treated
as a national patent. National law applies
arts 25 to 27 UPCA incorporated
into national law
7-22
Despite the fact that art.5 Unitary Patent Regulation was introduced into the Regulation as a
compromise after deleting the substantive law provisions of former arts 6 to 8, doubts remain
as to whether the CJEU has jurisdiction on substantive patent law issues in view of this article.
While originally the CJEU would have had jurisdiction over patent law as set out in those articles
as they would have been clearly part of EU law, the current art.5 Unitary Patent Regulation is
only a reference to Contracting Member States’ national law.
7-23
In this regard, some argue that this indirect reference to the UPCA in art.5(3) Unitary Patent
Regulation could still confer jurisdiction on the CJEU. 42 According to such commentators, the
close link between the Unitary Patent Regulation and the UPCA leads to the possibility of an
appeal to the CJEU in patent infringement cases. It is even claimed this is necessary in order for
there to be the “uniform protection” of intellectual property rights called for by art.118 para.1
TFEU and art.5(1) Unitary Patent Regulation. On the other hand, others take a more formalistic
approach, 43 arguing that the UPCA is not itself EU law but an international treaty, and as such
precludes any reference to the CJEU, other than to the extent required of its Contracting
Member States by virtue of their membership of the EU. The latter is, in addition, likely to be the
politically preferred interpretation bearing in mind the role of art.5 Unitary Patent Regulation as
a compromise solution.
7-24
The jurisdiction of the CJEU in this context will no doubt be challenged sooner or later, leaving it
to choose between these two options and decide whether it considers the relevant provisions
to fall within the scope of art.267 TFEU. 44
42
43
44
e.g. MEP Bernhard Rapkay, rapporteur on the Unitary patent, “Final EU patent deal could be in reach” Science Business dated
22 November 2012 available at http://sciencebusiness.net/news/75944/Final-EU-patent-deal-could-be-in-reach
[Accessed 13 April 2023].
e.g. European Scrutiny Committee of the UK Parliament report on the European Unitary patent, paras. 14.12 to 14.14,
available at http://www.publications.parliament.uk/pa/cm201213/cmselect/cmeuleg/86-xxii/86xxii18.htm
[Accessed 13 April 2023].
See also Haedicke “Rechtsfindung, Rechtsfortbildung und Rechtskontrolle im Einheitlichen Patentsystem” GRUR Int 2013,
p.609 to 615.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 108
