A guide to the UPC and the UP - Flipbook - Page 166
– A national law provides for sales to be enforced, obliging the patentee to keep supplying
the product. 59
Competition Law Based Defences
10-78 In addition to the defences to infringement set out in arts 27 to 29 UPCA, defendants to
infringement proceedings may attempt to raise arguments based on competition law in
response to a claimant’s case on infringement. Art.42(2) UPCA specifically states that the Court
must ensure that the rules, procedures and remedies are used in a fair and equitable manner,
and do not distort competition and indeed the first recital to the UPCA refers to cooperation
between Member States of the European Union in the field of patents as contributing
significantly to the creation of a system ensuring competition in the internal market is not
distorted. Art.24(1)(a) UPCA also specifically identifies EU law as a source of law upon which
the Court must base its decisions.
10-79 It is clear then that competition law under arts 101 and 102 TFEU have some role to play in the
Court’s decision making, although it should be noted that there is no express reference to
competition law issues in the list of actions for which the Court has exclusive competence in
art.32(1) UPCA, and art.32(2) UPCA states that national courts remain competent for actions
relating to patents which do not come within the exclusive competence of the Court.
10-80 In practical terms the most likely way in which competition law issues will arise is an allegation
by a defendant that asserting the patent against them is some form of abuse of a dominant
position under art.102 TFEU. 60 Such an allegation is generally considered as an issue relating to
the relief which should be granted by the court, rather than providing a defence to infringement
per se. In particular, objections made by defendants under competition law in patent
infringement proceedings generally relate to a request by the patentee for some form of
injunctive relief, rather than any request for financial compensation. 61
10-81 There may however be circumstances in which a defendant wishes to raise broader
competition law issues and assertion of the patent only forms part of a wider set of actions
which are said to be an abuse of a dominant position. The extent to which the Court will be
willing to engage with broader competition law arguments remains to be seen.
Infringement Prior to Grant
10-82 Art.32(1)(f) UPCA provides the Court with competence in relation to “actions for damages or
compensation derived from the provisional protection conferred by a published European
patent application”. This provision reflects arts 67(1) and (2) EPC which provide that, from the
date of its publication, a European patent application provisionally confers on the applicant at
least the right to claim compensation reasonable in the circumstances from an unauthorised
user of the invention. Beyond this minimum level of protection art.67(2) EPC leaves it open for
EPC contracting states to decide for themselves any additional rights conferred by a European
patent application and the circumstances in which those rights may be exercised. This is subject
to a requirement that the protection which attaches to the publication of the European patent
application may not be less than that which would result from publication of an unexamined
national patent application. 62 The result of this discretion has been a diversity of different
approaches to the protection conferred by a European patent application between EPC
59
60
61
62
Merck & Co. Inc., Merck Sharp & Dohme Ltd and Merck Sharp & Dohme International Services BV v Primecrown Ltd, Ketan Himatlal
Mehta, Bharat Himatlal Mehta and Necessity Supplies Ltd and Beecham Group Plc v Europharm of Worthing Ltd
(C-267/95 and C-268/95) [1996] ECR I-06285.
The mere existence and assertions of a patent does not of itself give the patentee a dominant position or indeed amount to
an abuse. See Huawei Technologies Co Ltd v ZTE Corporation (C-170/13) ECLI:EU:C:2015:477 at [46].
See further chapter 15 (Remedies) paragraphs 15-13 to 15-17.
Art.67(3) EPC does however allow EPC contracting states to impose certain translation requirements which may not
necessarily apply to national patent applications.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 156
