A guide to the UPC and the UP - Flipbook - Page 157
It is not clear to what extent (if any) this difference in language represents in scope between the
acts covered by art.25(a) to (c) and art.26(1) UPCA. However, in the end it is unlikely that the
Court will wish to take this type of fine distinction in language into account.
Any Person Other Than a Party Entitled to Exploit the Patented Invention
10-32 Art.26(3) UPCA clarifies that a person with a defence to infringement under art.27(a) to
(e) should not be considered a “party entitled to exploit the patented invention” for the
purposes of art.26(1) UPCA. This provision is intended to prevent the situation where a
defendant could avoid indirect infringing under art.26(1) UPCA by arguing that it had
supplied or offered the means to a third party who had a defence to infringement,
e.g. because that third party had a licence under the patent.
Means Relating to an Essential Element
10-33 National courts have taken divergent views as to the test for establishing whether means relate
to an essential element of an invention. The issue here is that the means have to be essential
to the invention which is the subject of the patent as opposed to means essential to any of the
claims of the patent. This gives rise to the possibility of alternative interpretations of what is
meant by the invention. German and UK courts have adopted a test whereby the means must
contribute to implementing the technical teaching of the invention, but do not require that the
relevant feature serves to distinguish the subject matter of the claim from the prior art i.e. the
feature need not be novel in its own right. 19 This differs from the approach taken by the Dutch
Supreme Court, which has held that the means must relate to the element of the patent which
distinguishes it from the state of the art. 20 When considering the German and Dutch
approaches, the UK court considered the German approach to be more closely aligned with the
apparent purpose of art.30(1) CPC, and also consistent with decisions taken by the French and
Belgian courts. 21
10-34 The term “means” covers physical and non-physical items. For example, a “means” can be a
physical product such as liquid or gaseous product, 22 or a non-physical product such as a piece
of software. 23 This broad interpretation seems logical since there are numerous inventions in
which individual features of the claim can be non-physical, such as a means for controlling a
device, or a process implemented as software.
Knowledge
10-35 Art.26(1) UPCA requires that the defendant knew, or should have known, that the means
were suitable and intended for putting the invention into effect. Thus art.26(1) UPCA provides
two possible ways in which a claimant can show that the defendant satisfied the knowledge
requirement either by demonstrating that (i) the defendant had actual knowledge; or (ii) that
the defendant should have known. The equivalent language in the CPC referred to the second
type of knowledge being attributable to the defendant where it was “obvious in the
circumstances”. It is not clear whether the use of “should have known” in the place of
“obvious in the circumstances” in the UPCA is intended to reflect a substantive difference
between the two provisions, although the former will clearly be a consequence of the latter.
19
20
21
22
23
Flügelradzähler (Impeller Flow Meter) (X ZR 48/03), 4 May 2004, Bundesgerichtshof; Pipetten System (Pipette System) (X ZR 38/06),
27 June 2007, Bundesgerichtshof and Nestec S.A. v Dualit Ltd [2013] EWHC 923, at [168] to [176].
Sara Lee v Integro (C02/227HR), Dutch Supreme Court.
Nestec S.A. v Dualit Ltd [2013] EWHC 923, at [174] to [175].
See for example Luftheizgerät, GRUR 2001, 228, 231, German Federal Supreme Court.
See for example Fräsverfahren, GRUR 2013, 713, German Federal Supreme Court and Menashe Business Mercantile Ltd v
William Hill Organisation Ltd [2002] EWCA Civ 1702, albeit in Menashe the software was supplied to users by the
defendant on an optical disk.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 147
