A guide to the UPC and the UP - Flipbook - Page 130
Right of Private Prior Use
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Some national patent laws, for instance in Germany and The Netherlands, contain provisions
protecting prior use rights. These provide that a patent shall have no effect against a person
who, at the time of filing the application, had already begun to use the invention, or had made
the necessary arrangements to do so but in private. 110 These national differences are preserved
in art.28 UPCA. 111 According to this provision, any person who, if a national patent had been
granted in respect of an invention, would have had a right based on prior use of that invention
in a Contracting Member State or a right of personal possession of that invention in a
Contracting Member State, shall enjoy the same rights in respect of a patent for the same
invention in that Contracting Member State. As there is no parallel provision in the sources of
law, the Court will have to consider this exemption in the light of the applicable national law. 112
References to the CJEU
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The Court of First Instance and the Court of Appeal are considered as courts common to the
Contracting Member States and as part of their judicial system. 113 Accordingly, as any national
court, the Court must cooperate with the CJEU in its proper interpretation of EU law by relying
on the latter’s case law and by requesting preliminary rulings in accordance with art.267
TFEU. 114 Where, at any stage of the proceedings, a question is raised before the Court and the
Court considers it necessary before it can give judgment, the Court of First Instance can refer
questions of EU law to the CJEU for preliminary ruling. 115 In the case of the Court of Appeal,
such referral to the CJEU is mandatory because, pursuant to art.267 TFEU, there is no judicial
remedy under national law or the Unitary Patent Package against its (the Court of Appeal’s)
decisions. The parties can also request a referral as art.267 TFEU is a manifestation of the right
to a fair trial as stipulated in art.6(1) Convention for the Protection of Human Rights and
Fundamental Freedoms.
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The procedures established by the CJEU for referrals for preliminary ruling apply. 116 If the Court
requests the CJEU to apply its expedited procedure the request shall in addition state why it is a
matter of urgency and the Registrar shall forward it as soon as practicable to the Registrar of
the CJEU. 117
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The RoP provide that the Court may stay its proceedings pending the outcome of the
preliminary ruling, but that, where it does not, the Court shall not give judgment until the CJEU
has given its ruling. 118 However, the UPCA Statute states that if the reference relates to a
question of interpretation of the TEU or TFEU or a question on the validity or interpretation of
acts of the institutions of the Union, it must stay its proceedings.
110
111
112
113
114
115
116
117
118
See s.12 German Patent Act.
The Court has competence over such issues under art.32(1)(g) UPCA.
The FAQ on the Court’s website specifically notes that prior user rights will, pursuant to art.28 UPCA, be governed by national
law, see https://www.unified-patent-court.org/faq/sources-law-and-substantive-patent-law-0 [Accessed 13 April 2023].
art.21 UPCA.
recital 10 UPCA.
r.266(1) RoP.
art.38(1) UPCA Statute, r.266(2) RoP.
rr.266(3) and (4) RoP.
r.266(5) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 120
