A guide to the UPC and the UP - Flipbook - Page 156
jurisdiction. It is worth noting however that art.55(1) UPCA may assist claimants where the
process is for obtaining a new product, as it creates a presumption that an identical product
in the hands of an infringer was obtained by the patented process. 16
10-27 The question of whether a product is the direct (as opposed to indirect) product of a process
has been the subject of some dispute in a number of national courts. The word “directly” in
art.25(c) UPCA has its origin in German law where the equivalent word “unmittelbar” had been
in s.6(2) German Patent Act since 1891. The meaning of this term has been considered on
numerous occasions by the German courts, which have decided that a product obtained
“directly” from a process is the product with which the process ends. The German courts have
further concluded that such a product does not cease to be a product obtained directly from
the process if it is subject to further processing, so long as such processing does not cause it to
lose its identity, and that a loss of identity does not occur where the product retains its
“essential characteristics”. 17 The UK Court of Appeal has also adopted this “loss of identity”
test, and commented (after reviewing authorities from the Netherlands, Switzerland, Denmark
and Austria) that it appears to represent the test generally adopted under European law. 18
Whether further processing results in a loss of identity will of course depend on the particular
circumstances of the case.
Indirect Infringement under art.26 UPCA
10-28 Art.26(1) UPCA allows a proprietor to prevent the indirect use of a patented invention.
Typical scenarios where indirect infringement arises include situations where parts of a device
are offered for sale or are supplied which can be combined with other parts of the device which
together make up the patented product. Further, indirect infringement may occur if a device
which can be used to carry out a patented method is offered for sale or is supplied.
10-29 The wording of art.26(1) UPCA derives from art.30(1) CPC. Although the CPC has never come
into force, many European countries have included provisions in their national patent laws that
are identical or at least similar to art.30 CPC. Typical examples are the corresponding legal
provisions in Germany, the UK, the Netherlands and France: in Germany, a provision for indirect
infringement was introduced in s.10 German Patent Act in 1981; in the UK, indirect infringement
was incorporated in s.60(2) Patents Act 1977; in France, art.L613-4(1) French Intellectual
Property Code from 1992 sets out the requirements for indirect infringement; and in the
Netherlands, art.73 Dutch Patent Act 1995 refers to indirect infringement.
10-30 The main elements required to establish indirect infringement under art.26(1) UPCA are that
the defendant has:
– Supplied or offered to supply (within the Contracting Member States in which the patent has
effect) any person other than a party entitled to exploit the patented invention;
– Means relating to an essential element of the invention for putting the invention into effect
within the Contracting Member States in which the patent has effect;
– Where the defendant knew (or should have known) that the means were suitable and
intended for putting the invention into effect.
Supply or Offer to Supply
10-31 The reference to supply or offering to supply in art.26(1) UPCA differs from the equivalent
language in art.25(a) to (c) UPCA, which variously refer to “offering” and “placing on the market”.
16
17
18
See chapter 17 (Evidence) paragraph 17-09.
Ossal, (1909) 42 RGZ 357 at 358 (Reichsgericht), Bindermittel (174), (1916) PMZ 135 (Supreme Court) and Unmittelbares
Verfahrenserzeugnis (2U148/76), [1979] GRUR 743 (Düsseldorf Oberlandesgericht, 15 September 1977).
Pioneer Electronics Capital Inc. v Warner Music Manufacturing Europe GmbH [1997] RPC 757.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 146
