Defendant actions before Unified Patent Court

Plaintiff or Claimant (usually the patent proprietor or exclusive licensee) may initiate actions against defendant brought before the Unified Patent Court. The actions may relate to Right to prevent the direct use of the invention and/or Right to prevent the indirect use of the invention and/or order Provisional and protective measures and/or order Permanent injunctions and/or order Corrective measures in infringement proceedings.

Decisions of the Unified Patent Court covers, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect.

Defendant actions

The Unified Patent Court shall apply Union law in its entirety and shall respect its primacy. The defendant may ask the Unified Patent Court, as a common to the Contracting Member States, to refer the case to CJEU (CEU) for preliminary rulings. UPC must ensure the correct application and uniform interpretation of Union law, as any national court, in accordance with Article 267 TFEU in particular.

Limitations of the effects of a patent

The patent protection is limited. If the defendant fall within at least one of the following categories, the rights conferred by a patent does not extend.

(a) acts done privately and for non-commercial purposes;

(b) acts done for experimental purposes relating to the subject-matter of the patented invention;

(c) the use of biological material for the purpose of breeding, or discovering and developing other plant varieties;

(d) the acts allowed pursuant to Article 13(6) of Directive 2001/82/EC (1) or Article 10(6) of Directive 2001/83/EC (2) in respect of any patent covering the product within the meaning of either of those Directives;

(e) the extemporaneous preparation by a pharmacy, for individual cases, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;

(f) the use of the patented invention on board vessels of countries of the International Union for the Protection of Industrial Property (Paris Union) or members of the World Trade Organisation, other than those Contracting Member States in which that patent has effect, in the body of such vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the
waters of a Contracting Member State in which that patent has effect, provided that the invention is used there exclusively for the needs of the vessel;

(g) the use of the patented invention in the construction or operation of aircraft or land vehicles or other means of transport of countries of the International Union for the Protection of Industrial Property (Paris Union) or members of the World Trade Organisation, other than those Contracting Member States in which that patent has effect, or of accessories to such aircraft or land vehicles, when these temporarily or accidentally enter the territory of a Contracting Member State in which that patent has effect;

(h) the acts specified in Article 27 of the Convention on Inter national Civil Aviation of 7 December 1944 (1), where these acts concern the aircraft of a country party to that Convention other than a Contracting Member State in which that patent has effect;

(i) the use by a farmer of the product of his harvest for propagation or multiplication by him on his own holding, provided that the plant propagating material was sold or otherwise commercialised to the farmer by or with the consent of the patent proprietor for agricultural use. The extent and the conditions for this use correspond to those under Article 14 of Regulation (EC) No 2100/94 (2);

(j) the use by a farmer of protected livestock for an agricultural purpose, provided that the breeding stock or other animal reproductive material were sold or otherwise commercialised to the farmer by or with the consent of the patent proprietor. Such use includes making the animal or other animal reproductive material available for the purposes of pursuing the farmer’s agricultural activity, but not the sale thereof within the framework of, or for the purpose of, a commercial reproductive activity;

(k) the acts and the use of the obtained information as allowed under Articles 5 and 6 of Directive 2009/24/EC (3), in particular, by its provisions on decompilation and interoperability; and

(l) the acts allowed pursuant to Article 10 of Directive 98/44/EC (4).

Right based on prior use of the invention

Any person who would have had a right based on prior use of that invention or a right of personal possession of that invention or a right of personal possession of that invention shall enjoy the same rights in respect of a patent for the same invention.

The person must have had the opportunity to grant a national patent in respect of an invention. The right to prior use is limited to that Contracting Member State.

Exhaustion of the rights conferred by a European patent

The rights conferred by a European patent does not extend to acts concerning a product covered by that patent after that product has been placed on the market in the European Union. The act of first introduction of the product to that market must be by, or with the consent of, the patent proprietor. This condition does not apply in that cases that are legitimate grounds for the patent proprietor to oppose further commercialization of the product.

Active actions before the Unified Patent Court

The defendant can brings following actions before UPC:

• actions for declarations of non-infringement of patents and supplementary protection certificates; and
• actions for revocation of patents and for declaration of invalidity of supplementary protection certificates; or in case that the infringement action has been initiated, counterclaims for revocation of patents and for declaration of invalidity of supplementary protection certificates.
• actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention.

Evidences in the procedure before UPC

Personal data or other confidential information of a party to the proceedings or of a third party must be protected as a trade secret. The Court may order that the collection and use of evidence in proceedings is restricted or prohibited to prevent abuse of evidence. The use of evidence or that access to such evidence can be restricted to specific persons.

The Court may order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement. The order must be requested by the plaintiff or claimant. The plaintiff or claimant must present reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed. The order may be even before the commencement of proceedings on the merits of the case. The preservation of the evidence may be subject to the protection of confidential information. The plaintiff or claimant cannot not be presented itself, but may be represented by an independent professional practitioner during the inspection of the premises. The name of the independent professional practitioner has to be specified in the Court’s order.

The Court shall ensure that the measures to preserve evidence are revoked or otherwise cease to have effect, at the defendant’s request, without prejudice to the damages which may be claimed, if the applicant does not bring, within a period not exceeding 31 calendar days or 20 working days, whichever is the longer, action leading to a decision on the merits of the case before the Court.