A guide to the UPC and the UP - Flipbook - Page 155
10-22 To infringe, the process must be used within the jurisdiction of the Court and that means within
the territory of the Contracting Member States. It presumably follows that infringement can
occur when different process steps are carried out in different Contracting Member States,
but that there will be no infringement under this limb of art.25(b) UPCA where some steps
are carried out outside the territory of the Contracting Member States. 12
Offer the Process for Use
10-23 Infringement typically occurs in this situation where a party markets its ability to carry out the
process for others. In order to amount to infringement, the process being so offered must
include all of the steps in the claims of the patent in question.
10-24 However, to infringe under this head there is also a knowledge requirement, which can be
satisfied in two ways. Either the alleged infringer must be shown to have known that the
process infringes the patent in question, or alternatively, that it “should have known” that this
was the case. 13 This would appear to require either: (i) actual knowledge that the offered use
would involve applying the inventive concept and that the inventive concept is protected by
the patent in suit; or (ii) demonstrating there are other circumstances which would have led
a reasonable third party to be aware that the process infringed the patent. It is expected that
drawing the patent to the attention of the alleged infringer in relation to the process will
provide a strong basis for arguing it had actual knowledge of infringement.
10-25
In addition, the offer, which must be made within the territory of the Contracting Member
States, must be for use of the process within the territory of the Contracting Member States
in which the patent has effect. 14 This requirement means that the scope of protection is
narrower than that of the equivalent provision relating to offers of products in art.25(a) UPCA,
which only requires the offer to be made in the Contracting Member States, but does not
require the supply which would result from the offer to take place in the Contracting Member
States. The difference in requirements between offers of products and processes is the result
of a diplomatic compromise reached during the Luxembourg Conference of 1975 between
those member states who advocated the same protection and the same conditions as for the
offer of a product (Germany, Belgium and France) and those who did not want the offer of a
patented process to be prohibited at all (notably the United Kingdom and The Netherlands). 15
Again, the extent of the Court’s jurisdiction means that use of the process does not have to be
limited to a particular Contracting Member State. Thus, the Court’s jurisdiction gives the owner
of a process patent far more opportunity to assert infringement of a patent than is the case
under the national patent systems.
Art.25(c) UPCA – Products Obtained Directly by a Patented Process
10-26 Art.25(c) UPCA covers the product of a patented process. Under art.25(c) UPCA, it is an
infringement to offer, place on the market, use, or import or store for those purposes a product
that is obtained directly by a process which is the subject matter of the patent. The language of
art.25(c) UPCA derives from art.29(c) CPC, but also has basis in art.64(2) EPC, which requires
the protection conferred by a European patent for a process to extend to products directly
obtained by such process. This type of direct infringement is generally invoked in situations
where a patent only claims a process, the process is carried out outside the jurisdiction of the
relevant court, and products arising from the process are then imported into the relevant
12
13
14
15
Although a Claimant may be able to rely on indirect infringement under art.26(1) UPCA, see paragraphs 10-28 to 10-43.
art.29(b) CPC differs slightly here as it uses the term “obvious in the circumstances” rather than “should have known”. It is not
clear whether the use of “should have known” in art.25(b) UPCA is intended to reflect a difference in substance from art.29(b)
CPC. Art.26(1) UPCA also contains an equivalent difference from art.30(1) CPC in the context of the knowledge requirement
for indirect infringement.
Belgian Constitutional Court, 28 September 2017, decision no. 105/2017, docket no. 6363, P2I Ltd. v Europlasma.
"Records of the Luxembourg Conference on the Community patent 1975" (Luxembourg, Office for Official Publications of the
European Communities, 1982), p.234 referred to in P2I Ltd. v Europlasma (see previous footnote).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 145
