A guide to the UPC and the UP - Flipbook - Page 164
It is not clear why such a person might need a defence to patent infringement, at least to the
extent that any such infringement arose from the use of software.
Art.27(l) UPCA – Acts Permitted by the Biotech Directive
10-66 Art.27(l) UPCA provides a defence to a claim of infringement based on the acts permitted by
art.10 Biotech Directive. Despite some difference in wording, these acts are in substance those
already provided for by art.27(i) and (j) UPCA, 49 and it is not clear what (if anything) art.27(l)
UPCA adds over and above those provisions.
Prior Use Exception under art.28 UPCA
10-67 Art.28 UPCA provides an exception to patent infringement based on personal prior use, or a
right of personal possession, of the invention.
10-68 While countries in the EU and the rest of the EPC contracting states have opted for a “first-tofile” patent system, this may entail some drawbacks where the invention to be covered by a
patent is already being used or held by a third party before the filing of that patent. In order
to avoid such unfair consequences, many countries have exemptions from patent infringement
in circumstances where someone has been doing something, or possesses something,
that falls within the scope of a patent, before the priority date of the patent but which,
for whatever reason, has not become public and therefore does not invalidate the patent.
This then gives some limited protection to such a private prior user or owner who themselves
did not file for a patent.
10-69 It is clear that this exemption only applies in the Contracting Member State where the prior
use has occurred or where the personal possession occurs. Thus, this exemption may well
be limited to a single country. The wording of art.28 UPCA also makes it clear that the
circumstances in which the right of prior use or possession will exist depend on the national
laws of the Contracting Member State in which the right is claimed. 50 This clearly allows the
possibility of the same fact pattern giving rise to different results in different Contracting
Member States. 51
10-70 The prior use exemption is, of course, an exception to the rights of a patent holder and
therefore the onus of proof of prior use falls on the party seeking to rely on the exemption.
Thus, in order to rely on this exemption, the prior user will need to produce evidence
demonstrating the prior use. The party seeking to rely on the exemption will also need to be
able to demonstrate prior use or possession of the invention prior to the date of the patent in
question, or its priority date, if earlier.
Exhaustion of Rights under art.29 UPCA
10-71 The principle of the exhaustion of patent rights, as has been developed under EU competition
law, is applicable to patents within the jurisdiction of the Court. The principle is expressed in
art.29 UPCA for European patents which are subject to the Court’s jurisdiction and in art.6
Unitary Patent Regulation for Unitary patents. Once a patented article has been placed on
the EU market, with the consent of the proprietor of the patent, that proprietor may no longer
assert its rights under the patent against that product. There is an exception to this where the
proprietor has legitimate grounds for objecting to the further commercialisation of the product.
The Court will however need to develop its own jurisprudence on this aspect of the exception as
49
50
51
See paragraphs 10-57 to 10-60.
The FAQ on the Court’s website specifically notes that prior user rights will, pursuant to art.28.
UPCA, be governed by national law, see https://www.unified-patent-court.org/faq/sources-law-and-substantive-patent-law-0
[Accessed 14 April 2023].
r.24 RoP requires that the SoD for an infringement action should contain “any argument arising from the provisions of Article
28 of the Agreement”.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 154
