A guide to the UPC and the UP - Flipbook - Page 159
Territorial Limitations
10-41 Art.26(1) UPCA contains two territorial requirements. The first requirement is that the supply
or offer to supply must be within the territory of the Contracting Member States in which the
patent has effect. The second requirement is that the means supplied or offered are suitable
and intended for putting the invention into effect in the territory of the Contracting Member
States in which the patent has effect. The second territorial requirement arises from the use
of the term “putting into effect therein”. 29 Compared to the national laws where the supply
or offer of supply and the intended use must generally take place in the respective national
territory, art.26 UPCA provides for a broader territorial scope of application since the territory
covers all Contracting Member States where the patent has effect – a much wider geographical
area. Therefore, under the UPCA, the supply or offer of supply may occur in one Contracting
Member State and the intended use in another Contracting Member State. This will allow
claimants to catch a wider range of indirect infringements and may provide a motivation to
obtain Unitary patents or keep European patents opted into the jurisdiction of the Court or,
indeed, to withdraw an opt-out over a European patent for the purposes of enforcement.
Staple Commercial Products
10-42 Art.26(2) UPCA contains a limitation such that it will not be considered indirect
infringement under art.26(1) UPCA to supply or offer means which are staple commercial
products. In general terms “staple commercial products” are stocked products in daily use like
nails, screws and standard electrical components which are universally applicable. However,
the term is not defined in the UPCA and whether means constitute “staple commercial
products” will need to be decided by the Court on a case by case basis, taking into account
the circumstances in the relevant field of commerce.
10-43 The exception in art.26(2) UPCA does not apply where the defendant induces the person
supplied to perform acts of direct infringement under art.25 UPCA. The exception only refers
to the “person supplied” and requires that person to be induced to perform acts under art.25
UPCA. On its face, this language appears to exclude the situation where the defendant offers
to supply a staple commercial product and encourages the person to which the offer is made
to put the invention into effect, although this is not entirely clear and may require further
clarification by the Court should the situation arise.
Defences to Actions under arts 25 and 26 UPCA
Limitations of the Effects of a Patent under art.27 UPCA
10-44 Art.27 UPCA provides a number of defences to infringement by identifying certain acts to which
the rights conferred by arts 25 and 26 UPCA do not extend. Many of these defences derive from
art.31 CPC and will therefore be familiar to practitioners in those European countries which
have adopted the CPC as part of their national law. The exceptions to infringement provided
by art.27 UPCA will need to be interpreted by the Court in a manner which is consistent with
art.30 TRIPS Agreement, 30 which provides:
“Members may provide limited exceptions to the exclusive rights conferred by a patent,
provided that such exceptions do not unreasonably conflict with a normal exploitation of the
patent and do not unreasonably prejudice the legitimate interests of the patent owner,
taking account of the legitimate interests of third parties.”
29
30
See the explanation by Aldous LJ in Menashe Business Mercantile Ltd v William Hill Organisation Ltd [2002] EWCA Civ 1702 at
[25], in the context of art.30(1) CPC from which the language of art.26(1) UPCA is derived.
art.24(1)(d) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 149
