A guide to the UPC and the UP - Flipbook - Page 160
Art.27(a) UPCA – Non-commercial Use
10-45 The rights provided under arts 25 to 26 UPCA are not infringed by acts which are done privately
and for non-commercial purposes. However, if done for a dual purpose, one of which was
commercial, this exemption does not apply. 31 Supplying a product or process to an end user
may also constitute infringement (either direct or indirect), notwithstanding that the end user is
able to benefit from the defence under art.27(a) UPCA.
Art.27(b) UPCA – Experimental Use
10-46 Art.27(b) UPCA exempts from infringement acts which are done for experimental purposes
relating to the subject matter of the patented invention. To benefit from this exemption the acts
must therefore: (i) be experimental in nature; and (ii) relate to the subject matter of the
patented invention. When applying the national equivalent of art.27(b) UPCA, a number of
national courts have been asked to consider whether acts were done for an experimental
purpose or for some other purpose. The UK Court of Appeal has suggested that acts done in
order to demonstrate to a third party that a product works, or to collect information to submit
to a third party (e.g. regulatory bodies) that the product works as intended, would not be done
for “experimental purposes”. 32 The Court of Appeal concluded however that acts would not
be automatically disqualified as being for experimental purposes if they had an ultimately
commercial aim. The German Federal Supreme Court has also reached a similar conclusion,
holding that acts can be for an experimental purpose even if:
“they are at the same time undertaken with the additional, or even overwhelming, motivation
of using the results of the tests to prepare for commercial exploitation.” 33
National courts have disagreed in the past as to whether the experimental use exception
should apply to clinical trials conducted in order to gain regulatory approval for a medicinal
product. This should not however be an issue which the Court is called upon to decide as
art.27(d) UPCA provides a separate defence in relation to conducting the tests necessary for
seeking a marketing authorisation, the so called “Bolar” exemption. 34
10-47 Art.27(b) UPCA also only applies where the experimental use relates to “the subject matter of
the patented invention”. National courts have found the CPC equivalent of this requirement 35
to have a limiting effect on the defence. 36 For example, using a patented product as part of the
equipment for an experiment will not fall within the exemption if the experiment is aimed at
investigating something other than the “subject matter of the patented invention”.
Art.27(c) UPCA – Breeding and Plant Varieties
10-48 Art.27(c) UPCA provides that the rights conferred by arts 25 to 26 UPCA are not infringed by
a third party’s use of biological material for the purposes of: (i) breeding animals or plants;
(ii) discovering plant varieties; or (iii) developing other plant varieties. This exception was not
provided in the CPC and will be new to practitioners in a number of Contracting Member States.
There are also further exemptions relating to use of an invention for agricultural purposes in
art.27(i) and (j) UPCA. 37
31
32
33
34
35
36
37
See for example Smith, Kline & French v Evans Medical [1989] 1 FSR 513.
Monsanto Co v Stauffer Chemical Co [1985] RPC 515, at p.542.
Klinische Versuche II Case X ZR 68/94, German Federal Supreme Court, aka Clinical Trials II.
See paragraphs 10-49 to 10-52.
art.31(b) CPC.
Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] FSR 513 and Klinische Versuche I (X ZR 99/92), German Federal
Patent Court.
See paragraphs 10-57 to 10-60.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 150
