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Direct and contributory infringement at the UPC

By James Ward, Partner

The Unified Patent Court Agreement (UPCA) includes provisions defining the acts which a third party can be prevented from performing in respect of a patent. These provisions cover both ‘direct’ infringement of the patent (Art. 25 UPCA: “Right to prevent the direct use of the invention”) and ‘indirect’ infringement (Art. 26 UPCA: “Right to prevent the indirect use of the invention”).

Direct infringement 

Art. 25 UPCA provides that a third party not having the proprietor’s consent may be prevented from:

  1. making, offering, placing on the market or using a product which is the subject-matter of the patent, or importing or storing the product for those purposes;
  2. using a process which is the subject-matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect;
  3. offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject-matter of the patent.

The patent may be a European patent having unitary effect (Unitary patent – UP) or a European patent which after grant at the EPO has been brought into effect separately in UPC participating states, provided that patent is not opted out.

Such a patent may cover a large territorial area. For example, a UP registered now takes effect in seventeen countries – Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden. Such a UP can be used to prevent a third party from performing any of the acts (a), (b) or (c) in any of those countries.

This means that acts performed in different countries can be stopped in a single infringement action at the UPC using such a patent. For example, through a single (successful) action at the UPC, a patentee owning a UP can stop a third party from making the patented product in France, storing it in Belgium, and placing it on the market in the Netherlands and Germany. Further, the third party can be liable for direct infringement in the whole territory even if it performs parts of a particular infringing act in different UPC countries, for example if it partly makes a patented product in a first UPC country and finishes making the product in another UPC country.

Indirect infringement 

Art. 26 UPCA provides that a third party not having the proprietor’s consent may be prevented from:

“supplying or offering to supply, within the territory of the Contracting Member States in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect”.

This provision enables the patentee to bring proceedings against a third party who is not themselves performing an act of direct infringement, for example is not themselves making or offering the patented invention, but who is providing means relating to an essential element of the invention to another person to work the invention.

Both the (offer to) supply by the third party and the putting of the invention into effect, i.e. the act of direct infringement by the other person, must be in the territory covered by the patent. This can be a very large territory, depending on the countries in which the patent is in effect. For a UP, this would be the combined territory of seventeen different countries.

There are similar provisions in national law of UPC states but a patentee may prefer to litigate at the UPC because the territory in which acts by a third party can be considered infringing acts can be much larger at the UPC depending on the countries covered by the patent.

Art. 26 UPCA provides an exception to what can be considered as “means, relating to an essential element of that invention”. Namely, “staple commercial products” are not covered unless “the third party induces the person supplied” to perform an act of direct infringement. This means that a third party would normally be free to supply a product found commonly in trade, unless the third party is also encouraging the person supplied to perform an act of direct infringement.

Questions for the UPC    

The Unified Patent Court will need to apply the provisions of Arts. 25 and 26 UPCA when dealing with cases that come before it. While some of the provisions appear straightforward, such as offering a patented product for sale, others may require more interpretation by the Court and the establishment of its own case law. For example, the Court may have to decide under what circumstances a third party should have known that the use of a process is prohibited without the patentee’s consent (Art. 25(b) UPCA) or may have to decide what is or is not a staple commercial product (Art. 26(2) UPCA).

There has also been some debate as to whether provisions of national law may be relevant when considering infringement at the UPC. The EU Regulation establishing the Unitary Patent (UP), Regulation (EU) No 1257/2012, provides that a UP has uniform effect in all (currently seventeen) UP participating states (Art. 5(1), 5(2)). Art. 5(3) then provides that:

“The acts against which the patent provides protection referred to in paragraph 1 and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating Member State whose national law is applicable to the European patent with unitary effect as an object of property in accordance with Article 7.”

On the face of it, this provision refers to the national law of the state in which the UP is considered an object of property. That will either be the place of residence of the (first named) applicant when the European patent application was filed or, if no applicant had a place of residence in a UP participating state, then Germany. That could mean that different Unitary Patents have different effects, depending on the country in which they are each considered an object of property.

Alternatively, this provision could be understood as simply a poorly worded reference to the UPCA, on the basis that in any UP participating state the law applicable to a UP will be the UPCA.

The UPC will at some point have to decide what this provision means.

Please contact your usual HLK attorney or if you would like further details of our UPC litigation offering.

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact or your usual HLK advisor.

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