A guide to the UPC and the UP - Flipbook - Page 123
UPCA as a Source of Law
7-47
In addition to the relevant EU law provisions, the Court will apply provisions from the UPCA
according to art.24(1)(b) UPCA. In this regard, arts 25 to 27 UPCA are particularly significant,
as they set out substantive patent law on direct and indirect infringement and limitations on the
effects of a patent. Art.29 UPCA sets out the principle of exhaustion of patent rights 68 and art.30
extends all these provisions to SPCs. 69 These provisions are applicable for Unitary patents
owing to the reference in art.5(3) Unitary Patent Regulation to the provisions of the UPCA as to
infringement. 70 Thus, the reference to the UPCA in art.24(1)(b) UPCA means that they are also
applicable for European patents. 71
EPC as a Source of Law
7-48
Art.24(1)(c) UPCA lists the EPC as a source of law on which the Court shall base its decisions.
Until the signing of the UPCA, the EPC, dated 5 October 1973, was the only legally binding
instrument with the partially achieved objective of harmonising patent law in Europe.
Essentially the validity of patents before the UPC is governed by the provisions in the EPC
and the infringement of patents before the UPC is provided for in the UPCA itself.
7-49
The EPC enables the grant of patents via a centralised procedure before the Examining
Division (and Technical Boards of Appeal (TBA)) of the EPO, a body created under this
Convention. The EPC also offers a centralised opposition procedure via Opposition Divisions
and TBA. The case law of the TBA is considered highly persuasive before many national courts
of the EPO Member States and the decisions of the TBA can have the effect of depriving a
patentee of a patent if it decides to revoke a previously granted patent entirely. Although the
EPO is not a judicial body, decisions of the TBA, and sometimes the Examining Division and the
Opposition Division, are assigned a quasi-judicial status. 72
7-50
Although mentioned in art.24(1)(c) UPCA as only one of the sources of substantive law, amongst
many other sources, the EPC fulfils a vital role in the functioning of the Unitary Patent Package.
This is because the UPCA relies entirely on the EPC to define the conditions for the grant and
validity of a patent. As such, the Unitary Patent Package does not contain its own provisions
relating to the grant and validity of a Unitary patent, but simply defines a “European patent
with unitary effect” in art.2(f) UPCA as “a patent granted under the provisions of the EPC which
benefits from unitary effect…”. Hence, the formal and substantive provisions of the EPC –
particularly arts 52 to 57, 84 and 123 EPC – will be relevant to the grant of a Unitary patent.
Furthermore, the powers of the Court to revoke a patent are stipulated in art.65 UPCA.
According to art.65(2) UPCA, the grounds of validity are the same as those listed exhaustively in
arts 138(1) and 139(2) EPC. This highlights not only the key role of the EPC, but also the fact that
the Unitary Patent Package does not seek to amend the EPC, but rather to rely on it. This is
illustrated in figure 7-3.
68
69
70
71
72
In the same terms as art.6 Unitary Patent Regulation.
See chapter 4 (Supplementary Protection Certificates).
Note art.5(3) refers to “the law applied to European patents with unitary effect in the participating Member State…”,
which is an indirect reference to the infringement provisions in the UPCA. See paragraphs 7-17 to 7-25.
See art.3(c) and (d) UPCA.
See particularly for the Boards of Appeal: Enlarged Board of Appeal, case G 1/97; Kraßer, “Patentrecht”, 6th edn.
(Münich: CH Beck, 2009), § 27 I.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 113
