Friday, 5 April 2013

A non-statistical digression

In a recent article  it has been commented that there is an “unforeseen advantage” to the unitary patent (or to non-opted out European patents) – namely the extension of the scope of contributory infringement from a national level to a (nearly) Europe-wide level.

I don’t think this advantage was unforeseen, I think it was intended: however matters may not be so simple as appears.

Article 26 of the Agreement is not solely applicable to unitary patents as the UPC is not solely applicable to unitary patents (Article 1) and wherever “patent” is referred to both ordinary (“bundle”) and unitary  patents are meant (Article 2(g)).

The effect of the Agreement thus appears to be to broaden national infringement law and expand the scope of contributory infringement - for both unitary patents and “bundle” patent litigated before the UPC  – to cover supply or offer to supply an “essential element” anywhere among the Contracting States where the European patent has effect.

While I think that is a good thing, I am not sure that all of the consequences have been thought through.

EPC Article 64 states that:-
“A European patent shall, subject to the provisions of paragraph 2, confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State”.
“Any infringement of a European patent shall be dealt with by national law.”

However, a national patent only gives rights in respect of that state and, for example, a UK national patent is not necessarily infringed by supply or offer to supply an essential element in the UK, where the directly infringing act is intended to take place in, say, Germany - even if a national German patent exists.

On a more general level, Article 5 of the Regulation on the unitary patent states 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.”

This means that the acts constituting infringement of a unitary patent where the applicable law is that of Germany will be considered under German law even though the effect is throughout the participating states. For another participating state (e.g. UK) the unitary patent (or a European patent litigated through the UPC) will thus not grant the same rights as a national patent (or a European patent litigated through the national courts) and will not be assessed by national law.

This appears contrary to the provisions of Article 64 EPC.

This, to my simplistic mind, means that to provide the breadth of scope for contributory infringement that is envisaged by the UPC, it is necessary to provide identical breadth of scope to national patents, for example, in the UK, by amending Article 60(2) Patents Act to read:-

Subject to the following provisions of this  section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom or any country participating in the Agreement of the Unified Patent Court where an equivalent national or European patent is in force .

I dislike using colloquialisms when discussing European matters, but this whole project is a dog’s breakfast that may become proverbial.


  1. As a complement, conflict between Art. 60 EPC and the unitary patent regulation have been identified by J. Koch:

  2. I'm not convinced by Koch's analysis. For a start, he refers to Art 142, but this does not seem to be relevant. The 'unitary patent' system referred to in Art 142 supersedes national patents for the member countries who sign up. That is not what we are going to have. Art 149(a) allows other types of inter-country agreement, however. More seriously, it seems unnecessary and over-literal to construe Art 4(2) PatReg as contradicting Art 64 EPC. Rather it modifies it in particular circumstances (lex specialis).