A guide to the UPC and the UP - Flipbook - Page 153
10-11 The meanings of the terms “make” and “offer” have been the topic of some debate in the
courts of a number of Contracting Member States when considering whether an act infringes
a national or European patent. Precisely how these terms will be interpreted by the Court
remains to be seen but the Court may draw guidance from the following principles arising
from national case law.
Make
10-12 German courts have considered the interpretation of “make” on a number of occasions and
concluded that it should be construed in a broad sense, including each element of the whole
production process from the beginning to the finished product, such that it is not necessary
that the entire product has been produced by one person. However, purely preparatory
acts preceding the manufacture (e.g. drafting technical drawings) were not considered to
qualify as “making”. 6
10-13 Modifications or substantial repairs of a patented product have also been classified by the
German courts as a (re-)manufacturing of a product and so exclusively reserved for the
patentee. 7 This, however, only applies if the modification or repair changes the identity of
the original product in a way that makes it such that the product can be considered as a new
product, and this has to be assessed on a case-by-case basis. As a guideline, a German court
will assume that the patent is infringed if the repair work leads to the renewal of parts which
are usually not replaced/repaired during the lifetime of the patented product, or in which the
essential characteristic of the invention is realised. 8
10-14 The UK Supreme Court has also considered the meaning of the word “makes”. After considering
the relevant decisions of the German courts, the UK Supreme Court concluded that “makes”
should be read in a practical way and in context, and is not a term of art such that it would
inevitably be a matter of fact and degree in many cases whether an activity involved “making”
an article or fell short of it. The court indicated that it may sometimes be useful to consider
whether the alleged infringer is repairing rather than making the article, although this should
not be allowed to obscure the central issue of whether the alleged infringer “makes” the
patented article. 9
Offer
10-15 The “offer” must be an offer within the territory of the Contracting Member States in relation to
infringing products. Therefore the Court is likely to consider an offer made by a retailer outside
the territory, but which targets customers within it, as falling within the scope of this section.
Note however that the relevant act under this ground is the offer itself, irrespective of whether
the offer results in an actual sale. The ultimate location in which the infringing product will be
supplied as a result of the offer does not matter, e.g. an offer made in Germany to supply
infringing products in the United States would still fall within the scope of art.25(a) UPCA. When
considering the equivalent UK law provision (“offering for disposal”) the UK court, referring to
the wording of art.29(a) CPC (from which art.25(a) UPCA derives) concluded that it extended
beyond specific offers for sale and also covered offering in pre-contractual negotiations or an
advertisement. The court did however conclude that, in order to be an infringement, the offer
must relate to a supply which would take place during the lifetime of the patent. The contents
of a website are likely to constitute an offer within the territory of the Contracting Member
6
7
8
9
Mülltonne GRUR 1951, 452, German Federal Supreme Court; Kleiderbügel GRUR 1995, 338, 341, German Federal Supreme
Court; Rundfunkübertragungssystem GRUR 1987, 626, German Federal Supreme Court; Simvastatin GRUR 2007, 221,
German Federal Supreme Court.
Rheinmetall-Borsig-Urteil I GRUR 1956, 265, German Federal Supreme Court; Flügelradzähler GRUR 2004, 758, German Federal
Supreme Court, Laufkranz GRUR 2006, 837, German Federal Supreme Court; Palettenbehälter II GRUR 2012, 1118, German
Federal Supreme Court; Pipettensystem GRUR 2007, 769, German Federal Supreme Court.
Palettenbehälter II GRUR 2012, 1118, BGH.
Schutz (UK) Ltd v Werit UK Ltd [2013] UKSC 16.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 143
