#5 UPC series: Sources of law and substantive law

This article is the fifth in a series analyzing the Unified Patent Court (“UPC”) and the provisions of the Agreement on a Unified Patent Court (“UPC Agreement”) of February 19, 2013 (the full text of the agreement is accessible here). This installment in the series focuses on the provisions of the UPC Agreement dealing with the sources of law and substantive law (Articles 25–30 UPC Agreement).

The UPC Agreement contains some provisions of substantive patent law. Specifically, Articles 15 to 30 of the UPC Agreement define the rights conferred by patents, as well as relevant exceptions. One quick clarification: for the purposes of this article, “patents” refers to both unitary patents and classic European patents.

Article 25 UPC Agreement deals with direct infringement, giving the patent rightsholder the right to prevent unauthorized third parties from: (i) making, offering, placing on the market, or using a patented product, or importing or storing a patented product for those purposes; (ii) using a patented process or, when the third party knows or should have known that its use is prohibited without authorization, offering a patented process for use in any of the contracting member states in which that patent has effect; (iii) offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a patented process.

Article 26 UPC Agreement concerns contributory infringement: the patent rightsholder is entitled to prevent unauthorized third parties from supplying or offering to supply in any of the designated contracting member states in which the patent has effect any person other than a party entitled to exploit the invention with means, relating to an essential element of that invention, for putting the invention into effect—when the third party knows or should have known that those means are suitable and intended for putting that invention into effect. This does not apply to staple commercial products, unless the third party induces the receiver to perform direct infringement.

Article 27 UPC Agreement lists the limits on the effects of a patent, including inter alia: (a) private or experimental use; (b) the use of biological material for the purpose of breeding or discovering and developing other plant varieties; and (c) the extemporaneous preparation by a pharmacy, in individual cases, of a medicine in accordance with a medical prescription or acts concerning the medicine thus prepared.

Article 28 UPC Agreement provides a specific regime for prior user rights: these are left to be decided under national law and remain restricted to the local level of the contracting member state only. In other words, a prior user right in one country does not give the right to apply the invention in another contracting member state.

On the other hand, Article 29 UPC Agreement establishes a European Union–wide exhaustion rule with respect to the rights conferred by a European patent, stipulating that a patentee’s rights do not extend to acts concerning a product covered by a patent after it has been placed on the market in the European Union by the patentee or with the patentee’s consent, except in cases where there are legitimate grounds for the patentee to oppose further commercialization of the product.

Lastly, Article 30 UPC Agreement states that a supplementary protection certificate shall confer the same rights conferred by the patent and shall be subject to the same limitations and obligations.

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