Thursday, 21 January 2016

A dog's breakfast

In 2013 I posted a comment on the contributory infringement provisions in the UPC. 

The draft SI makes explicit the problems I saw as implicit.

Under s.60(2) Patents Act 1977, contributory infringement requires provision in the UK of means essential to exercise of the invention in the UK.

Article 26 of the UPC Agreement defines contributory infringement as:-

A patent shall confer on its proprietor the right to prevent any third party not having the
proprietor's consent 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, on its face, is reasonably clear as applying both to unitary and bundle patents, and meaning that supply from one country into any contracting members state where the patent has effect infringes.  

So let us imagine a case of contributory infringement where a UK company has supplied in the UK “essential means” to a German company for making a product in Germany that is covered by a non-opted out bundle patent designating at least UK and Germany.

The proprietor sues before the UK Court. The UK Court looks to section 60(2) PA and sees that so far as bundle patents are concerned, nothing has changed in s.60(2) [Schedule A3 3 makes it clear that s. 60 applies, and Schedule A3 4(2) makes it clear that for unitary patents only, the references to the UK should be replaced by  references to any of the Participating Member States]. The UK Court considers this to be clear and so finds that the UK Company does not infringe since the invention was not put into effect in the United Kingdom.

However, if instead the UK Company is sued before the UPC, the language of Article 26 would indicate there is infringement since there is supply from one Contracting Member State in which the patent has effect to another Contracting Member State in which the patent has effect.  Infringement is found.

No problem given that the judgement will be enforceable in the UK according to Schedule A4?

Or would this be a big political problem? If whether you win or lose depends on the court concerned, what does this do to the idea of justice?  

Now take the same situation from the UK Company’s perspective. Receiving a letter from the patent proprietor threatening infringement they immediately launch a threats action and an action for a declaration of non-infringement and succeed, because of the argument set out above.

What will the UPC do if the proprietor launches a subsequent action before the UPC on the basis that although the same facts are concerned a different law applies?

Justice should be determined on the quality of the judges, not on the quality of the lawmakers, but the present route to implementation of the UPC and UP in the UK appears set to frustrate the aims of the whole project by setting the stage for complex and expensive disputes as to which law prevails; and as to whether the UK has met its obligations under the UPC and EP.

The urge in the UK to to re-write clear treaty provisions to further “clarify” them frequently results in total confusion. This present case meets that model by casting darkness where there was light.

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