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?
· 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;
· 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?
Expanded territorial scope for contributory infringement?
European patent with unitary effect
European patent (UK)
UK National patent
Effect of the SI
If the SI is accepted as is, the consequences are significant.
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.
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.
If the UK cannot follow a treaty it has held to for around 40 years, how can it be trusted in anything else?
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.
· 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.