A guide to the UPC and the UP - Flipbook - Page 167
Contracting States. 63 In the UK, for example, it is possible to obtain damages covering the
period between publication of an application for a European patent and the grant of that
patent, but proceedings to obtain such damages may only be started after the patent has been
granted. This differs significantly from Italy where, in addition to damages, it is also possible
to obtain orders for description and seizure of articles infringing the patent application and
anything used in the making thereof based on the publication of the application alone, i.e. prior
to the grant of the patent. The position in France is somewhere between, as French law allows
the possibility of seizure of the articles infringing the patent application, but the court hearing
the infringement action will stay proceedings until the patent is granted.
10-83 Two important questions for those wishing to enforce the provisional protection conferred by
a European patent application before the Court will be: (i) will the Court permit proceedings to
be issued prior to the grant of a Unitary or European patent; and (ii) if yes, which types of
proceedings and which categories of relief will be available?
10-84 In relation to the first question, art.32(1)(g) UPCA provides that:
“the Court shall have exclusive competence in respect of ... actions relating to the use of the
invention prior to the granting of the patent…”.
This appears to be a clear indication that the Court will have competence to hear actions based
on the rights conferred by a published European patent application prior to its grant.
10-85 In relation to the second question, the UPCA does not provide any specific guidance as to
which types of action can be issued prior to the grant of a European patent application, or the
categories of relief which the Court will be able to grant. One possible interpretation is that the
general reference in art.32(1)(g) UPCA to “actions relating to the use of the invention prior to the
granting of the patent” allows the Court to hear all possible actions relating to infringement of a
European patent application which are otherwise provided by the UPCA in relation to granted
patents. This would include applications for provisional measures, standard infringement
actions and applications for an order to preserve evidence (saisie) or inspection issued prior
to an infringement action.
10-86 However, the Court may be hesitant to grant provisional measures (such as a provisional
injunction) where a patent has not yet been granted and the full scope of protection conferred
by the claims is not yet known. It may be less hesitant in granting such measures if the EPO has
issued a notice of intention to grant the patent such that the scope of the granted claims is
known and formal grant will occur imminently. The Court may also be more receptive to
applications for orders to preserve evidence made prior to the grant of the patent and one
option would be for the Court to grant such applications but then to stay any subsequent
infringement proceedings until the patent has been granted, i.e. following an approach similar
to that which is currently adopted in France.
10-87 One other issue that the Court will need to address, should it be asked for relief in relation to a
European patent application, is does it have jurisdiction over that patent application? As the
opt-out provisions in art.83(3) UPCA refer to “a proprietor of or an applicant for a European
patent” the answer is presumably yes, unless an opt-out has been filed and not withdrawn
before the commencement of proceedings. However, it should be noted that following grant
the patentee will need to choose whether to seek unitary effect for the patent or whether to
maintain the patent as a European patent. If the decision is taken to maintain the patent as a
European patent, having sought relief in relation to the application will preclude the proprietor
from later opting the granted patent out of the jurisdiction of the Court. 64
63
64
The approach taken by each EPC contracting state to provisional protection under art.67(2) EPC has been helpfully recorded
on the EPO website, available at http://www.epo.org/law-practice/legal-texts/html/natlaw/en/iiia/index.htm [Accessed 14 April
2023]. The approach taken to translation requirements imposed under art.67(3) EPC has also been recorded on the EPO
website, available at http://www.epo.org/law-practice/legal-texts/html/natlaw/en/iiib/index.htm [Accessed 14 April 2023].
art.83(3) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 157
