Home » Law » The unitary patent and contributory infringement – an unforeseen advantage?

The unitary patent and contributory infringement – an unforeseen advantage?

Keltie LLP

K2 IP Limited

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EU flagProponents of the unitary patent package have talked long and hard about the benefits they hope it will bring for patentees. The advantages that have been discussed so far have been primarily financial, the grand plan being that reduced translation requirements, a single renewal fee and central litigation will all lead to lower costs in obtaining, maintaining and enforcing your patent.

The ins and outs these financial advantageous, and the wry eyebrows being raised by IP professionals across Europe by way of response, could make for a very long blog post indeed, and we won’t be tackling this one today.

Instead, we have been considering whether the unitary patent might offer an advantage in terms of the actual scope of protection that it provides, specifically with regard to contributory infringement.

In brief, and by way of example, contributory infringement (also referred to as indirect infringement or induced infringement in the US) occurs in the UK when an infringer supplies or offers to supply in the UK, means that are essential for putting an invention into effect in the UK. Crucially, both the supply of the essential means and the act of putting the invention into effect must occur in the UK for contributory infringement to occur. Similar criteria apply in other European countries.

So, if your invention is protected by separate national patents in the UK and Germany, a competitor offering to supply an essential component in the UK to be used for manufacturing the invention in Germany would not be guilty of contributory infringement of your UK patent.

For a unitary patent, or a validated European patent  over which the unified patent has exclusive competence, contributory infringement will be covered by Article 26 of the unified patent court Agreement which states that:

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.”

The implication of this is that the supply of the essential means and the act of putting the invention into effect need not occur in the same country, but need only occur within the group of countries covered by your unitary patent, or your validated European patent that is under the exclusive competence of the UPC. So, in the situation described above, if your invention were protected by a unitary patent instead of separate national patents, the competitor would be guilty of contributory infringement of your unitary patent.

It therefore appears that, when it comes to contributory infringement, the unified patent court, does have something to offer that the national courts do not.

IPCopy suspects that in most cases this is unlikely to be the factor that persuades an undecided applicant or patentee to opt for the unified patent court over the national courts, but if contributory infringement is a potential issue, this could be well worth some thought.


3 Comments

  1. Tim Roberts says:

    Very interesting point. Clearly it works for Unitary Patents. But for European patents subject to the Unified Court’s jurisdiction? Suppose you opt out from that jurisdiction, then want to sue a contributory infringer. Can you then opt back in again, and catch him? Equity might suggest not, but can that be squared with the text?

    • ipcopyemily says:

      Thanks Tim – glad to hear your thoughts. As you say, the implication of the text seems to be that a patentee would be able to control whether or not an act would be deemed to be contributory infringement by opting out of, or back into, the competence of the UPC, which hardly seems fair.

      I notice there has been some recent discussion of the need for the various unitary patent countries to amend their national laws in line with the Agreement to ensure that a unitary patent has the same effect as the equivalent national patents in line with Article 2(2) EPC. (IPKat, and IPnoncredre, for example). If the contributory infringement discrepancy is accounted for by way of amendment to national laws, this would solve that problem, although I think it would be a pretty clumsy way of doing it, and there’s no guarantee it will happen.

      This also ties in with the comment below – thank you Anon for your thoughts, and for the reference to the Actavis vs Eli Lilly case, which I will be reading with interest!

  2. Anonymous says:

    The Opt out only refers to the Court not the Agreement so Art 26 may also be binding on national courts. If so it may be interesting to see which Courts think they have relevant jurisdiction when the essential means and the putting into effect happen in different countries. The Arnold case Actavis vs Eli Lilly is already pretty interesting and this could add another layer to future cases.

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