A guide to the UPC and the UP - Flipbook - Page 163
proprietor and provided that he does so for his own agricultural purposes and does not
supply the breeding stock or reproductive material commercially to others.
Art.27(k) UPCA – Decompilation and Interoperability of Computer Programs
10-61 Art.27(k) UPCA provides that the rights conferred by a patent shall not extend to:
“the acts and the use of the obtained information as allowed under Articles 5 and 6 of the
Directive 2009/24/EC, in particular by its provisions on decompilation and interoperability.”
10-62 Art.5 Directive 2009/24/EC (the “Software Directive”) 46 provides three exceptions to the acts
which are said to be the exclusive right of the holder of copyright in a computer programme
under art.4 of the Software Directive. Art.27(k) UPCA does not make it clear whether all three
exceptions provide the basis for some form of defence to patent infringement, or just some of
them. The reference to arts 5 and 6 of the Software Directive is qualified by “in particular by its
provisions on decompilation and interoperability”. As neither acts under art.5(1) or art.5(2)
relate to decompilation or interoperability, 47 it is not clear whether these acts are intended
to form the basis of a defence to patent infringement under art.27(k) UPCA.
10-63 Art.5(3) of the Software Directive provides that:
“The person having a right to use a copy of a computer program shall be entitled, without the
authorisation of the rightholder, to observe, study or test the functioning of the program in
order to determine the ideas and principles which underlie any element of the program if he
does so while performing any of the acts of loading, displaying, running, transmitting or storing
the program which he is entitled to do.”
10-64 This exception to copyright infringement under art.5(3) is not expressly described in the
Software Directive as relating to “decompilation or interoperability”, but comes closer to these
concepts than arts 5(1) and 5(2). The acts identified in art.5(3) must therefore be included within
the scope of art.27(k) UPCA, if its reference to art.5 of the Software Directive is to have any
effect. However, exactly how the exception under art.5(3) should be applied as a defence to
patent infringement is unclear. For example, the exception in art.5(3) applies to a “person
having a right to use a copy of a computer program”. It is not clear why such a person would be
in need of a defence to patent infringement resulting from the use of that software, as their use
of the invention would already be with the proprietor’s consent.
10-65 Art.6 of the Software Directive provides that reproduction of the code and translation of its
form shall not constitute an infringement of copyright where those acts are “indispensable to
obtain the information necessary to achieve the interoperability of an independently created
computer”. This exception is made subject to a number of restrictions, set out in art.6(1)(a)
to (b) and art.6(2)(a) to (c). In the context of copyright protection, the intention behind this
exception is to prevent the copyright owner’s monopoly from allowing them to prevent others
making software which is interoperable with their own. However the rationale for extending
this exception into the domain of patent law is, again, unclear. It is also unclear how the
exception should be applied in a patent infringement context. For example, one of the
conditions on the application of the exception in the copyright context is that the:
“acts are performed by a licensee or by another person having a right to use a copy of the
program, or on their behalf by a person authorised to do so”. 48
46
47
48
Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer
programs (OJ No. L 111, 5.5.2009, p.16).
art.5(1) relates to acts necessary for the use of a computer program for its intended purpose. Art.5(2) relates to the making of
a back-up copy of a program.
Art.6(1)(a) Software Directive.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 153
