UPC and Infringement Actions:

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.




Opt-out and legal certainty

A few weeks ago the UPC Blog was asked these questions « How is the UPC going to ensure legal certainty between the entry into force of the Unified Patent Court Agreement and the moment European patent holders or holders of a European patent with unitary effect obtain -for those who wish- an opt-out?” “ What happens when you rely on one of these patents which are under national jurisdiction until the entry into force of the UPCA (Unified Patent Court Agreement), and then go back to national jurisdiction after the opt-out?


The Opt-out is definitely one of the most challenging area of the UPCA, and we have in this blog been paying a particular attention to this subject -you can find more information about the Opt-out here– and in this post we will focus on the relationship between the opt-out, legal certainty and the rights of prior users.


As explained in our previous posts, the opt-out will be available to European patent holders during the transitional period, which will start after the entry into force of the UPCA and will last for seven years (art 83.1). This transitional period might be renewed for a further seven years if the Administrative Committee considers it after consultation necessary (art 83.5).


Once a European patent holder has decided for an opt-out, it will need to be notified and registered. The opt-out will become effective on the day the notification of the opt-out is received by the Registry, provided that the opted-out patent is not the subject of a pending litigation. The Contracting Member States and the Preparatory Committee however still have to look into the necessary arrangements to achieve this. The opt-out will then be effective for the lifetime of the patent except if the patent holder withdraws the opt-out pursuant to art 83.4 UPCA, provided that no action has been brought before a national court.


It is here necessary to differentiate between the transitional period and the opt-out period. In fact if patent holders can only opt-out of the UPC jurisdiction during a renewable period of seven years, the opt-out will on the other hand last for as long as the patent exists.


But which rules will govern the use and/or infringement acts of an EP which happened prior to the opt-out? How is legal certainty maintained between the entry into force of the UPC Agreement and the notification and registration of the opt-out? In fact there might be for some European patents a moment where they fall under the UPC jurisdiction until the patent holder decides and registers the opt-out, putting them back under national jurisdiction. How then is fairness ensured for prior users of European patents?


Article 28 of the UPCA clarifies this situation for prior personal use: “any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.” Hence, prior user rights will be governed by national law, which will thus ensure legal certainty in that domain independently of a potential opt-out.


Moreover, it is important to note that the same is true with prior uses of an invention patented through a European Patent with Unitary Effect. In fact, following article 2 of the UPCA “patent” refers to both a European patent and a European Patent with unitary effect.


Now an uncertainty remains for the qualification of infringement acts that occurred prior to and after the opt-out. Indeed, although the definition of the infringement acts under the UPCA (article 25 and 26 UPCA) is very similar to that of the national laws of the Contracting States (eg article L. 613-3 French IP Code), it is not identical and national case law differs from one country to another. The uncertainty stands from the fact that pending the opt-out the alleged infringers should assess their risk by reference to the applicable provisions of the UPCA taking into consideration the fact that if they were to sue for infringement this would occur before the UPC and not before the national courts. In the event the patentee decides an opt-out than the alleged infringer’s assessment of his risk is flawed.


This risk is inherent to the opt-out possibility that the Contracting States have decided to offer to EP holders. One issue which does not seem to have been contemplated however is whether the national courts which would have to rule on the infringement of an opted-out patent would have to apply the UPCA rules for the period of time prior to the opt-out and the national rules for the infringement acts that occurred after the opt-out. For instance, the statute of limitation might differ (eg, 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 the UPCA states at article 72 that “(…) 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 of the last fact justifying the action.”). This subject will however be treated in more depth in a later post, soon to be published.


The UPC Blog awaits your comments and questions on this post and on any complementary topic.