What does the EPC say about patent scope and infringement?
The EPC states that infringement is determined under
national law, and that (subject to specific exceptions) national and European
patents shall have the same extent.
Article 2(2) EPC
(2) The European patent shall, in each of the Contracting States for
which it is granted, have the effect of
and be subject to the same conditions as a national patent granted by
that State, unless this Convention provides otherwise.
Article 64 EPC
1)
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 o f
which it is granted, the same rights
as would be conferred by a national patent granted in that State.
2)
If the
subject-matter of the European patent is a process, the protection conferred by
the patent shall extend to the products directly obtained by such
process.
3)
Any
infringement of a European patent shall be dealt with by national law.
So the scheme of the EPC is that European patents shall have
the same effect as national patents except
that where national law does not provide for the direct product of a process to
be infringing, an EP patent shall cover such product.
The only other discussion of infringement in the EPC appears
to be Article 70(4)(b) EPC concerning what happens if there is a defective
translation:-
Article 70(4) EPC
4) Any Contracting State
which adopts a provision under paragraph 3:
………..
(b) may prescribe that any person
who, in that State, in good faith has used or has made effective and
serious preparations for using an
invention the use of which would
not constitute infringement of the application or patent in the original translation, may, after
the corrected translation takes effect, continue such use in the course of his business or for the needs thereof without payment.
Although Article 167 EPC1973 provided for reservations in
certain areas, these provisions are long time-expired and were removed with EPC
2000. EPC 2000 has no provision for reservations.
How does this affect the UK?
The UK:-
·
provides that the direct product of a process
infringes national law;
·
is a London Agreement country, not requiring the
provision of any translation; and
·
has never declared any reservations in relation
to the EPC (when such was possible);
and so there is no scope under the EPC for UK national
patents and European patents to have any different effect if the UK is be
compliant with the EPC. (See at the end for an alleged argument to the contrary
– it deserves its place as a footnote).
Do the Unified Patent Court Agreement (UPCA) and Regulation on the unitary patent (UPR) affect this?
The unitary patent is product of a regulation that is declared to be a special agreement under the EPC
Article 1(2) UPR
2. This Regulation constitutes
a special agreement
within the meaning of
Article 142 of the Convention on the Grant of European Patents of
5 October 1973,
as revised on 17 December 1991 and
on 29 November 2000 (hereinafter ‘EPC’).
and the regulation recognises that the Contracting States
have obligations under the EPC
Article 9(2) UPR
2. The participating Member States shall ensure compliance with this
Regulation in fulfilling their
international obligations undertaken in the EPC and shall cooperate to that
end.
The UPR thus imposes additional obligations on the
Contracting States (to comply with the Regulation) while not relieving them of the
burden of fulfilling their obligations under the EPC.
The UPCA takes as a basis that all Contracting States have
ratified the EPC (3rd recital) and includes the EPC and national law as sources of
law. The UPC contains a comprehensive code for infringement of both European patents
and European patents with unitary effect.
Neither the UPCA nor UPR provide any indication that a national
right shall have any different scope from a European patent (unitary or
otherwise).
Neither the UPCA nor UPR provide any indication that a European
patent with unitary effect shall have any different scope from a "bundle" European
patent.
Article
30(2) Vienna Convention on the law of treaties states:-
2.
When a treaty specifies that it is subject
to, or that it is not to be considered as incompatible with, an earlier or
later treaty, the provisions of that other treaty prevail.
Which,
given the acknowledgement of the EPC in both the UPCA and UPR, indicates that
the terms of the EPC are not overruled by the UPCA or UPR.
Thus, where
there is an interpretation available that is in accordance with the EPC, UPCA,
and UPR it is to be preferred to one which ignores fundamental principles of
the EPC.
Further,
it could be argued that compliance with obligations under the EPC (where not
repugnant to the UPR) will become part of EU law once the UPR is ratified.
What does the draft statutory instrument (SI) on implementing the UPCA and UPR say?
The SI does not take the approach of adopting the infringement provisions of the UPCA wholesale but instead seeks to modify (with little success) the wording of section 60 of the UK Patents Act to various extent.
·
s.2 (3) of the SI amends section 60 to add in exceptions
to infringement of Articles 27(c) and 27(k) UPCA;
BUT
·
s.2 (4) says the Article 27(k) UPCA exception
does not apply to national patents.
In Schedule A3 of the SI
·
s.1 and s.2 says section 60 is a “relevant
statutory provision”
·
s.3 says the relevant statutory provisions apply
in relation to a European patent with unitary effect in the same way as they
apply in relation to a European patent (UK); but
·
s.4(10) says that for the unitary patent only,
in s. 60 “references to the United Kingdom are references to the
territory of a Contracting Member State in which the European patent with
unitary effect has effect;”
So we have three laws of infringement (at least – see
below):-
- National law [S.60 as amended absent the Article 27k UPC exception]
- European patent (UK) law [S.60 as amended, with Article 27k UPC exception, and with contributory infringement assessed on the “old” basis of both supply and use being required to be in the UK
- European patent with unitary effect law [S.60 as amended, with the Article 27k UPC exception, and with contributory infringement assessed on Article 26 UPCA criteria of supply and use “within the territory of the Contracting Member States in which that patent has effect” being required]
Article 27k UPCA exception applies?
|
|||
Yes
|
No
|
||
Expanded territorial scope for contributory infringement?
|
Yes
|
European patent with unitary effect
|
|
No
|
European patent (UK)
|
UK National patent
|
|
Effect of the SI
If the SI is accepted as is, the consequences are significant.
Legal advice
In assessing the legal position in the UK, three different
laws of infringement will need to be considered whereas at present there is
only one. Giving advice on a pending application will require two opinions, one
on the basis that any patent granted goes ahead as a unitary patent, and
another on the basis that it proceeds as a “bundle” patent.
Disharmonisation
Many are trying to harmonise IP provisions on a wider than
European front. If the UK falls back from harmony within Europe then the scope
for harmonisation and the prospect of lower costs recede into the far distance.
Distrust
If the UK cannot follow a treaty it has held to for around
40 years, how can it be trusted in anything else?
Legal action
The proposed SI introduces a law contrary to the EPC, so
opening up the dispute procedure of Article 173 EPC. It is a reasonable bet
that any such dispute would result in judgment against the UK.
Failure to comply with the EPC may also be failure to comply
with the UPR.
Inconsistent legal decisions
It is open to question whether the UPC would decide a question
of contributory infringement by a UK company of a “bundle” patent in the same
way as a UK court would. The risk of different legal outcomes depending on
which court was seized with a particular case would be both legally uncertain
and provide scope for forum shopping.
Arguments as to why the SI is permissible
An alleged argument is that:-
Article 142 EPC states that:
(1) Any group of Contracting States, which has
provided by a special agreement that a
European patent granted for those States
has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States.
(2) Where any group of Contracting States has availed itself of the
authorisation given in paragraph 1,
the provisions of this Part shall apply.
“This part” being part IX of the EPC, which comprises
Articles 142-149a.
Article 149a EPC states that:-
Nothing
in this Convention shall be construed as
limiting the right of some or all of the
Contracting States to conclude special agreements on any matters concerning European patent
applications or European patents which under this Convention are subject to and
governed by national law…
and
lists a number of administrative examples.
Infringement
is a matter for national law (Article 64(3).
And so arguably it should be
considered that in amending the provisions applicable before the UPCA (under
Article 149a) there is no requirement to amend national provisions. As for the
different territorial scope of contributory infringement for European patents
and unitary patents, that reflects the difference in nature between a unitary
right and a non-unitary right.
This
argument:-
·
ignores the specific wording of the EPC in
Articles 2 and 64 EPC;
·
interprets Article 64(3) EPC as permitting
something directly inconsistent with Article 2 EPC;
·
expands Article 149a to permit changes in
national law to overrule the EPC.
In
short, it is nonsense.
What can be done?
Hope that someone in the UK is listening and hope that someone sees sense.
Otherwise, a messy situation will follow.
