The UPC Blog has looked in previous posts at the UPC competence and its sources of law, in this post we want to look specifically into infringement and the changes that the UPC will bring for IP professionals when considering bringing an action for infringement. Hence, the question that the UPC Blog would like to address in this post is simple: “How is the creation of a new unified patent jurisdiction going to impact infringement actions?”
This question is of course very limited in its approach and the UPC Blog would like to invite its readers to submit new questions on this topic, whether linked to their professional practice or on a more academic level. It is also important for our readers to note that the last draft of the rules of procedures being still under review by the Preparatory Committee, this post might be modified and updated in consequence.
We will look first at the definitions of infringement in the European Patent Convention (EPC) and in the Unified Patent Court Agreement (UPCA), and the differences between the two. Then we will limit our observations to the issue of the statute of limitation for an infringement action as it is now and how it will change with the UPCA.
The European Patent Convention looks at infringement actions at article 64 EPC. It starts by defining the rights conferred by a European Patent at 64(1) and (2): “(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 of 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.” And follows by stating at 64 (3) that “any infringement of a European patent shall be dealt with by national law.” Infringement acts are thus defined at national level: their definition, the way national courts qualify acts of infringement, the statute of limitation, etc.. may therefore vary between Contracting States.
Under the UPCA, infringement acts are defined in articles 25 and 26, which give patent holders the right to prevent direct and indirect use of their patent. This definition of infringement as opposed to the EPC will be common to all countries ratifying the UPCA. Hence, under the UPCA a patent is infringed when a third party without the proprietor’s consent “makes, offers, places on the market or uses a product which is the subject-matter of the patent, or imports or stores the product for those purposes; uses 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; offers, places on the market, uses, or imports or stores for those purposes a product obtained directly by a process which is the subject-matter of the patent (art 25 UPCA)”
Moreover, under article 32 UPCA, the UPC will have exclusive competence for “actions for actual or threatened infringements of patents and supplementary protection certificates (…) and for actions for declarations of non-infringement of patents and supplementary protection certificates”.
Hence, after the entry into force of the UPCA -officially planned for early 2016- the European Patents and the European patents with unitary effect will both be included in the UPCA’s definition of “patent” (at article 2). Accordingly, any action brought against the alleged infringer of a “non opted-out European Patent” and of a European patent with unitary effect will be decided by the UPC applying the definition of the infringement act of the UPCA.
This is precisely what the UPCA aims to achieve: a unified and homogenous European arena for patent infringement actions.
It is not to say of course that the EPC will lose any of its importance. On the contrary it will still be very much relevant. In fact some patent holders might want to opt-out from the UPC and stay under national jurisdictions for the whole of their patent’s lifetime or until they decide to withdraw their opt-out as provided by article 83 UPCA. In these circumstances, the EPC will carry the same weight as it has now, before the entry into force of the UPCA. Furthermore, under article 24 UPCA, the EPC is recognized as a source of law of the UPCA and as such will be relied upon by UPC judges.
But what about the time limits within which claims for patent infringement can be brought?
Under the EPC, statute limitations are determined by national law. For example in Austria infringement claims must be brought within three years from the date the right holder obtains knowledge of both the infringement and the identity of the infringer, whereas in Belgium the time limit is five years. A three-year time limit is nonetheless considered to be the general time limitation, and will be common for most countries. In some countries however, like in France, the date at which the patent holder obtains knowledge of the infringement act is irrelevant (France has just extended to 5 years its 3 year-time limitation in a law adopted by the French National Assembly in February 2014).
The UPC however sets up a different time limit under article 72 UPCA which states: “(…) actions relating to all forms of financial compensation may not be brought more than five years after the date on which the applicant became aware, or had reasonable grounds to become aware, of the last fact justifying the action.” This will of course bring considerable change to professionals whishing to initiate infringement actions by increasing how far back infringement claims can be investigated and thus potentially increasing the number of actions for infringement.
The UPCA -nor the draft rules of procedure- however address the question of the difference between statute limitations of infringement acts and statute limitations of the action for infringement. Hence if the five-year limit stated at article 72 UPCA seems to correspond to statute limitations of the action for infringement, nothing is said about infringement acts.
The Unified Patent Court will thus bring considerable change to infringement actions and the definition of infringement acts for patentees by creating not only a single jurisdiction for European patents and European patents with unitary effect but also by providing a definition of infringement common to all Contracting States. This definition has however its limits and might need to be clarified at a later stage.
This post invites IP professionals to think differently about infringement in the context of the coming entry into force of the UPCA.
The UPC Blog awaits your comments and questions on this post and on any complementary topic.