A guide to the UPC and the UP - Flipbook - Page 121
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Importantly, art.4(4) Translation Regulation limits the liability of the infringer in cases where a
translation into the infringer’s own language of the patent was not available to the infringer at
the time of the infringing act or acts. 52 According to this provision the Court has to consider:
“… whether the alleged infringer acted without knowing or without reasonable grounds for
knowing, that he was infringing [the Unitary patent] before having been provided with the
translation referred to in paragraph 1.”
Pre-existing Substantive EU law Related to Patents
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EU law already comprises some substantive patent law, which will also be applicable in
proceedings before the UPCA. Specifically, this concerns the Regulation on plant variety rights, 53
the Directive on biotechnological inventions 54 and the SPC Regulations. 55
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The Regulation on plant variety rights deals in art.5(1) with the protection of varieties of all
botanical genera and species. Art.1 of the Regulation establishes a system of community
plant variety rights as the sole and exclusive form of community industrial property rights
for plant varieties. This Regulation, however, will not be within the jurisdiction of the Court.
Therefore, the only effect it has on the Court is that, by reference to art.14 of the Regulation,
the rights conferred by a patent are limited in certain circumstances where farmers use the
products of their harvest. 56
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The Directive on biotechnological inventions is aimed at harmonising the rules with regard to
the patentability of inventions in the field of living nature throughout the Community. It has
already been implemented in the EPC as well as in the patent laws of the various Contracting
Member States. 57 Due to the primacy of EU law, 58 the Court will not apply national laws, but
rather the Directive itself. Art.10 of the Directive 59 limits the rights conferred by a patent. 60
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The SPC Regulations should be considered pre-existing EU law related to patents, even though
the SPCs for which they provide a legal basis, whilst within the jurisdiction of the Court, are not,
strictly speaking, patents. For certain inventions, SPCs confer on a patentee a right which has
the effect of extending the protected term of the patent insofar as it covers a product subject to
a marketing authorisation. Art.30 UPCA specifies that an SPC shall confer the same rights as
conferred by the patent (being a European patent or a Unitary patent) and shall be subject to
the same limitations and the same obligations. SPCs are described in detail in chapter 4.
Rome I and II
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53
54
55
56
57
58
59
60
61
The Rome I and Rome II Regulations, concerning contractual and non-contractual obligations
respectively, are also of relevance for the determination of applicable national law. 61
See chapter 15 (Remedies) paragraphs 15-54 to 15-58.
Council Regulation (EC) No.2100/94 of 27 July 1994 on Community plant variety rights, OJ No. L 227, 1.9.1994, p.1.
Directive 98/44/EC of the European Parliament and the Council of 6 July 1998 on the legal protection of biotechnological
inventions, OJ L 213, 30.7.1998, p.13.
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).
art.27(i) UPCA.
For instance in the German Patent Act. See German Federal Law Gazette (BGB. I, p.146) from 28 January 2005, concerning the
law implementing the directive on biotechnological inventions from 21 January 2005.
art.20 UPCA. See paragraph 7-08.
“The protection referred to in Articles 8 and 9 shall not extend to biological material obtained from the propagation
or multiplication of biological material placed on the market in the territory of a Member State by the holder of the
patent or with his consent, where the multiplication or propagation necessarily results from the application for which
the biological material was marketed, provided that the material obtained is not subsequently used for other propagation
or multiplication.”
art.27(l) UPCA.
See paragraphs 7-67 to 7-73 for further discussion of national law as a source of law on which the Court can base its decision.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 111
