A guide to the UPC and the UP - Flipbook - Page 154
States if the website specifically targets customers within Contracting Member States with an
offer to supply the infringing product.
Placing on the Market
10-16 Transferring physical possession of a product within a Contracting Member State in the course
of commerce will clearly be “placing on the market”. The term is however capable of broader
interpretation 10 and the Court will need to establish its own case law to define the scope of the
acts which constitute placing on the market under art.25(a) UPCA.
Use
10-17 Use of a product will typically be proceeded by another act prohibited by art.25(a) UPCA,
such as an offer and/or a placing on the market of the product. Prohibiting the use of an
infringing product may however have particular utility where the patentee wishes to prevent
the activities of an end user of the product, who may not themselves have made, imported,
offered or placed that product on the market.
Importing for the Purposes of Making, Offering, Using or Placing that Product on the Market
10-18 While there may be circumstances in which a defendant is successfully able to argue that
the importation was not for one of these purposes, in reality such cases will be few and far
between. One issue the Court may need to consider is which entity is responsible for the
importation, especially in cases where it is a commercial carrier who physically transports
the product into the relevant Contracting Member States. The entity responsible for the
importation may not necessarily be the entity which contracts with the carrier and the Court
may need to consider ownership of the legal title to the product at the point of physical transfer
in order to decide who is responsible for the importation. 11
Storing for the Purposes of Making, Offering, Using or Placing that Product on the Market
10-19 The term “storing” in art.25(a) UPCA differs slightly from the equivalent provision in art.29(a)
CPC which refers to “stocking”. On its face the term “storing” would appear to be broader than
“stocking”, as the latter is more closely linked to the onwards commercial supply of the product
to a third party. However the requirement that the storing is for the purposes of making,
offering, using or placing that product on the market suggests that in practice the effect of
any distinction between “storing” and “stocking” may be relatively small.
Art.25(b) UPCA – Processes
10-20 Under art.25(b) UPCA, it is an infringement to: (i) use a process which is the subject matter of
the patent; or (ii) offer the process for use, where the infringer knows or should have known
that the use of the process is prohibited.
Use a Process
10-21 A process claim is infringed by any person who carries out all of the steps set out in the claim,
either on its own or as part of a longer and more complex process.
10
11
For example in the context of EU product safety legislation, “placing on the market” is considered to cover any “offer or an
agreement (written or verbal) between two or more legal or natural persons for the transfer of ownership, possession or any
other property right concerning the product in question”, see section 2.3 of Commission Notice – The ‘Blue Guide’ on the
implementation of EU products rules 2022 (OJ No. C 247 29.06.2022 p.1).
See for example the discussion by the UK House of Lords (as it was then) in Sabaf v Meneghetti [2005] UKHL 45 at [34] to [45].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 144
