A guide to the UPC and the UP - Flipbook - Page 133
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However, the Preparatory Committee issued an advisory note in January 2014, concluding that
if a European patent (or an application for a European patent or an SPC that has been issued
for a product protected by a European Patent) is opted out or during the transitional period
the case is brought before a national court, the UPCA no longer applies. As a consequence,
the competent national court has to apply applicable national law. 129
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In its note, the Preparatory Committee commented that, as there was no clear answer in the
UPCA, 130 recourse should be made to the guidance on interpretation of treaties found in the
Vienna Convention. The Committee pointed out that, looking at the object and purpose of the
UPCA, there is no obligatory harmonisation of national law through the UPCA and, in this
regard, the UPCA differs from the EU trade mark system, where the regulation establishing the
EU trade mark was accompanied by a directive harmonising national trade mark law.
Furthermore, there is no ability of national judges to refer interpretative questions to the Court,
risking diverging interpretations on substantive issues of patent infringement. In addition to
these points, it has been noted that the UPCA mostly deals with procedural law (which is
directly applicable purely to the Court) and substantive law on infringement is inextricably
intertwined with procedural law. 131
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The question that follows on from this conclusion is, does it matter? The answer is generally
“no”, but there remain some differences both between national patent laws on infringement 132
and these laws under the UPCA (despite significant harmonisation of national patent laws
under the influence of the CPC and the fact that, in the UPCA, the infringing acts, defences
and exhaustion principles 133 correspond to the CPC). For example, the exemptions to patent
infringement for research purposes and for certain activities relating to computer programs 134
and the geographic scope of protection given to process claims and against indirect
infringement 135 differ between some national laws and the UPCA. To avoid or reduce any
differences, some Contracting Member States have already amended their patent legislation
and others are in the process of doing so.
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One difference between national and UPCA laws that may prove significant is in the case of the
Bolar exemption 136 (which applies to certain acts undertaken for the regulatory approval of
medicinal products), where the majority of Contracting Member States (but not all)
implemented a broader exemption than the minimum standard required by the European
directives. In contrast, the UPCA adopts that minimum standard. 137 Thus, a patentee could
potentially commence an action before the Court against a defendant who, although acting
within the national law in relation to a particular European patent, could be found to infringe
that same European patent by the Court.
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To sum up, the applicable law depends on the court seized; a national court, when seized with
an action relating to a European patent during the transitional period or an opted-out European
patent, will apply national patent law and not the UPCA.
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130
131
132
133
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136
137
“Interpretative note – Consequences of the application of Article 83 UPCA” dated 29 January 2014, available at
https://www.unified-patent-court.org/en/news/interpretative-note-consequences-application-article-83-upca
[Accessed 13 April 2023].
In particular, the Preparatory Committee noted that the reference in art.3 UPCA to the transitional provisions of art.83 UPCA
is ambiguous and does not give a clear answer to the question.
Ohly A “Art 83 Controversies” given at the European Judges’ Forum, Venice, San Servolo, 25 October 2014 available at
http://eplaw.org/wp-content/uploads/2015/12/Ohly_Ansgar_presentation.pdf [Accessed 13 April 2023].
Roche Nederland BV & others v Frederick Primus & another (C-539/03) [2006] ECR I-6535 [29].
arts 25 to 27 and 29 UPCA.
art.27 UPCA.
arts 25(b) and 26 UPCA.
art.10(6) Directive 2001/83/EC of 6 November 2001 on the Community code relating to medicinal products for human use
(OJ No. L311, 28.11.2001, p.67) as amended by Directive 2004/27/EC of 31 March 2004 (OJ No. L136, 30.4.2004, p.34).
See chapter 10 (Infringement of Unitary Patents (and European patents Subject to the Court) Substantive Law) paragraphs
10-49 to 10-52.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 123
