A guide to the UPC and the UP - Flipbook - Page 151
Introduction
10-01 This chapter deals in turn with both aspects of the substantive law of infringement:
first, the acts which the proprietor of a patent has the right to prevent as well as the
exceptions to and limitations on those rights and second, the determination of whether
an alleged infringing product or process falls within the scope of a patent claim i.e., claim
construction and scope of protection.
Rights, Limitations and Exceptions
10-02 The rights conferred on proprietors of Unitary patents and European patents subject to
the Court’s jurisdiction, along with various limitations on those rights, are set out in arts 25
to 28 UPCA:
– Art.25 UPCA provides the right of the proprietor to prevent any third party from direct use
of the invention (“direct infringement”);
– Art.26 UPCA provides for the right of the proprietor to prevent any third party from
supplying means that are essential for putting the invention into effect
(“indirect/contributory infringement”);
– Art.27 UPCA sets out the limitations on the protection provided by the patent, outlining the
acts that do not constitute direct infringement; and
– Art.28 UPCA sets out the exception to patent infringement of personal prior use (i.e. prior
use that was not made public but rather kept confidential and therefore attracts a limited
exception to infringement).
10-03 The rights provided under arts 25 and 26 UPCA are also subject to an exhaustion of rights
principle, which will apply in the case of products covered by the relevant patent which are
placed on the market in the EU (or the rest of the EEA) by, or with the consent of the patent
proprietor, unless there are legitimate grounds for the proprietor to oppose further
commercialisation of the product. Although expressed in similar language in each case,
the legal basis for this principle depends on whether the patent in question is a Unitary
patent or European patent subject to the Court’s jurisdiction:
– Art.6 Unitary Patent Regulation provides for where there is an exhaustion of rights in the
case of a Unitary patent; and
– Art.29 UPCA provides for where there is an exhaustion of rights in the case of
a European patent.
10-04 The infringing acts identified in arts 25 and 26 UPCA, many of the defences to infringement
in art.27 UPCA and the exhaustion of rights principle in art.29 UPCA/art.6 Unitary Patent
Regulation follow closely arts 29 to 32 of the CPC, 1 and will therefore be familiar to practitioners
in European countries which have adopted the infringing provisions of the CPC as part of their
national law. While the interpretation of CPC derived provisions has not always been uniform,
some degree of consistency has been achieved by national courts treating the decisions of
other national courts as a useful source of guidance.
1
Which became arts 25 to 28 in the revised CPC of 1989 (89/695/EEC), OJ No. L 401 30.12.1989 p.1.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 141
