A guide to the UPC and the UP - Flipbook - Page 152
10-05 The Court will have to decide the extent to which it will apply the existing national case law
when establishing its own case law regarding infringement. It is submitted that this need not
be limited to the case law of Contracting Member States when the courts of another European
jurisdiction have also considered the same issue in relation to the same provision. This is
especially so where such case law has engaged in comparative legal analysis. Where some form
of consensus has been reached by national courts on a particular issue, it would be reasonable
to assume that the Court will take this into account when reaching its own decisions. When
faced with conflicting national decisions, it will be left to the Court to choose its own path.
10-06 While much of arts 25 to 29 UPCA derives from the CPC, the UPCA also provides a number
of defences and exceptions to infringement which were not included in the CPC and have
been implemented to a varying extent in the national laws. These include the defences to
infringement under art.27(c), (d) and (i) to (l) UPCA and the provision regarding rights to
continue prior use of an invention contained in art.28 UPCA.
10-07 It should also be noted that, while arts 25 to 29 UPCA provide a framework for the Court to
determine whether a Unitary patent or European patent subject to the Court’s jurisdiction has
been infringed, there will be certain situations in which the Court will also need to fall back on
national law principles when considering issues relating to infringement. For example, the UPCA
does not define the circumstances in which the Court will be entitled to find a party jointly liable
for infringement, e.g. as a joint tortfeasor alongside another party. 2
Direct Infringement under art.25 UPCA
10-08 Art.25 UPCA provides the general rule that any third party may be prevented from directly
infringing by using, etc the invention/subject matter of a patent. “Patent” is defined as a
“European patent and/or a European patent with unitary effect”. 3
10-09 Art.25 UPCA outlines the different acts which amount to direct infringement in subparagraphs
(a) to (c). The wording of art.25(a) to (c) UPCA derives from art.29(a) to (c) CPC but also has basis
in art.28(1) TRIPS Agreement. 4 In summary:
– Art.25(a) relates to products;
– Art.25(b) relates to processes; and
– Art.25(c) relates to products obtained directly by a patented process.
Art.25(a) UPCA – Products
10-10 Under art.25(a) UPCA, it is an infringement to make, offer, place on the market or use a product
which is the subject matter of the patent, or import or store the product for those purposes.
Thus, this provision relates to infringement of patent claims for products and defines the acts in
relation to those products that are prohibited (making, offering, placing on the market, using,
and importing or storing for one or more of those purposes). There is no requirement of
knowledge on the part of the infringer under art.25(a) UPCA (i.e., the infringer does not need to
know that its act constitutes an infringement and does not need to have knowledge that the
patent exists). 5
2
3
4
5
See chapter 7 (Applicable Law) paragraphs 7-67 to 7-75.
art.2(g) UPCA.
Which the Court must take into account by virtue of art.24(1)(d) UPCA, see chapter 7 (Applicable Law) paragraphs 7-59 to 7-61.
Although note that a defendant’s knowledge as to infringement will become relevant when the Court comes to assess any
financial compensation due in relation to the infringement, see chapter 15 (Remedies) paragraphs 15-54 to 15-58.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 142
