A guide to the UPC and the UP - Flipbook - Page 158
10-36 The required knowledge is likely to be inferred where the defendant has provided specific
instructions on how to use the means, for example in manuals or insertions, in a manner which
would directly infringe the patent. 24 The situation will be more complex however when the
defendant supplies instructions which refer to some other (non-infringing) way to use the
means, as the Court will need to consider whether the defendant could still have the requisite
knowledge notwithstanding the content of the instructions. 25
10-37 Note the difference in wording between what the knowledge has to be under art.26(1) UPCA
compared with that for infringement by offering a process under art.25(b) UPCA. Here there
does not need to be any knowledge as regards the patent and the knowledge only needs to be
as regards the invention covered by the patent. Thus to establish that the defendant has the
requisite knowledge, it is not necessary for the claimant to show that the defendant knew about
the existence of the patent in question by, for example, having drawn it to their attention.
10-38 A number of questions have also been raised by national courts when considering the subject
of knowledge, regarding whether the means were “suitable and intended for putting that
invention into effect”.
10-39 Firstly, national courts have been asked to decide who must or ought to have the relevant
knowledge that there is an intention to put the invention into effect, i.e. does it need to be
the defendant who intends that the means will be used to put the invention into effect, or is it
sufficient for the defendant to know that the direct customer and/or the ultimate user intends
to put the invention into effect? The approach taken to this issue in various European
jurisdictions was surveyed by the UK Court of Appeal in Grimme v Scott. 26 The Court of Appeal
concluded that the required intention was to put the invention into effect and that the question
was what the defendant knew or ought to have known about the intention of the person who
was in a position to put the invention into effect—the person at the end of the supply chain.
The Court of Appeal found support for this approach in a number of leading
German authorities. 27
10-40 Further, national courts have also been asked to consider: (i) when the intention of putting the
invention into effect must be formed, i.e. must it be a settled intention at the time of the supply
(or offer) of the means, or can it be an intention formed later; and (ii) whether the intention
needs to be held by a specific third party, or whether it is sufficient that there is a possibility
that at least some end users could intend to put the invention into effect? In answer to these
questions the UK court has identified the following principles, which it believes to be consistent
with the leading German decisions and also reflects the position adopted in French, Italian and
Spanish law: 28
– It is enough if the supplier knows (or it is obvious to a reasonable person in
the circumstances) that some ultimate users will intend to use or adapt the “means”
so as to infringe;
– There is no requirement that the intention of the individual ultimate user must be known
to the defendant at the moment of the alleged infringement; and
– Whilst it is the intention of the ultimate user which matters, a future intention of a future
ultimate user is enough if that is what one would expect in all the circumstances.
24
25
26
27
28
See for example Antriebsscheibenaufzug, GRUR 2005, 848, 851, BGH.
See for example the discussion in Actavis v Eli Lilly & Company [2016] EWHC 234 (Pat).
Grimme Landmaschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110.
Deckenheizung [BGH X ZR 153/03], 13 June 2006; Haubenstretchautomat [BGH X ZR 173/02], 9 January 2007; and Pipettensystem
[BGH X ZR 38/06], 27 February 2007.
Actavis v Eli Lilly & Company [2016] EWHC 234 (Pat) at [27] to [32].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 148
