A guide to the UPC and the UP - Flipbook - Page 165
currently, no directly applicable case law exists in the CJEU in the context of patents. 52 The CJEU
has previously rejected attempts 53 to establish that particular factual circumstances give rise to
an exception to the exhaustion principle it established in Centrafarm v Sterling. 54
A Product Placed on the Market in the EU
10-72 Art.29 UPCA refers rights conferred by a European patent not extending to a product that has
been placed on the market in the “European Union”.
10-73 This gives rise to the following questions: does this exhaustion of rights occur where a product
has been placed onto the market of one of the Contracting Member States and that product
was imported from: (i) a Contracting Member State where there is no relevant patent
protection; or (ii) one of the Member States which have not signed or ratified the UPCA?
10-74 With regard to the first situation (i), it is likely that the Court will rely on CJEU case law which
considers that patent protection in the country of export where the product was already on
the market is not required for patent exhaustion to occur in the country of importation. 55
As regards the second situation (ii), whether or not a country (e.g. Spain) is party to the UPCA
is probably irrelevant with regard to application of art.29 UPCA, since art.29 only requires that
the product be placed on the market in the EU with no reference to the UPCA.
10-75 A further question arises where the product is first put onto the market with the consent of the
patent proprietor in an EEA country such as Norway. Art.29 UPCA only refers to putting
products onto the EU market although art.8 EEA Agreement extends the application of the
principle of exhaustion of patent rights to the EEA countries. A strict reading of art.29 UPCA
would suggest that it does not apply to products put onto the market in an EEA country.
However, a strict reading of art.29 UPCA would cut across the intention of art.8 EEA Agreement.
Indeed, if this strict wording is adopted by the Court, this would result in an unusual
consequence: patent exhaustion would have a narrower effect before the Court than before
national courts dealing with national patents and European patents with no unitary effect.
Therefore it seems unlikely that the Court will adopt this narrow reading of art.29 UPCA.
Requirement of Patent Holder’s Consent
10-76 The CJEU has ruled that in order for patent exhaustion to take place, the patentee must have
authorised, or at least implied its consent with regards to the supply of the relevant product
onto the market in question. A clear example of the patentee giving consent is where the sale of
the product is carried out by the patentee and/or by the patentee’s licensee. 56
10-77 CJEU case law has identified various situations where the proprietor’s consent has not been
given. 57 For example, when:
– The patentee is forced to grant compulsory licenses;
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There are however a significant number of cases that have dealt with the issue of legitimate grounds for objecting to the
further commercialisation of a product in the context of European trade mark law, but it is not clear if or how this case law
could be directly applied in the context of patents. See Bristol-Myers Squibb v Paranova, (C-427/93, C-429/93 and C-436/93)
[1996] ECR I-03457, [1997] 1 CMLR 1151, [1997] FSR 102 and Zino Davidoff SA v A & G Imports Ltd (C-414/99), Levi Strauss & Co. &
Anor v Tesco Stores Ltd & Anor (C-415/99) and Levi Strauss & Co. & Anor v Costco Wholesale UK Ltd (C-416/99) [2001] ECR I-08691.
See Merck v Stephar (C-187/80) [1981] E.C.R. 2063; [1981] 3 CMLR. 463 and Merck v Primecrown Cases C-267/95
and C-268/95 [1996] ECR I-06285.
Centrafarm v Sterling, (C-15/74) [1974] ECR. 01147; [1974] 2 CMLR 480.
Merck & Co Inc v Stephar BV and Petrus Stephanus Exler (C-187/80) [1981] ECR I-02063.
Centrafarm BV and Adriaan de Peijper v Sterling Drug (C-15/74) [1974] ECR I-01147.
The issue of consent has also been considered by the CJEU in the context of exhaustion of trade mark rights. See Levi Strauss
& Co. & Anor v Tesco Stores Ltd & Anor (C-415/99) and Van Doren + Q GmbH v Lifestyle Sports + Sportswear (C-244/00) [2003] ECR I3051.
Pharmon v Hoechst (C-19/84) [1985] ECR 2281.
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A Guide to the UPC and the UP 155
