The Territoriality Principle and Transnational Use of Patented Inventions – The Wider Reach of a Unitary Patent and the Role of the CJEU
International Review of Intellectual Property and Competition Law - IIC Volume 44/2013, Issue 5
Posted: 23 Jul 2013
Date Written: July 12, 2013
On 11 December 2012 the European Parliament adopted Regulation (EU) No. 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (Unitary Patent Regulation, UPR). The UPR has a significant impact on cross-border uses of a patented invention in the participating Member States. The protection conferred by a unitary patent is "wider" than the protection conferred by a bundle of national rights. This is true even when the bundle of national rights is in force in the whole territory for which a unitary patent may be issued. The unitary character of the latter calls for a unitary character of the territory of protection, that is, the absence of national borders within the market covered by the exclusive right. This has practical consequences for the cases where the defendant has practiced all features of the asserted patent claim, but not within the same national jurisdiction. Indeed, under the unitary patent regime the several different acts committed by the same actor (or actors) in various Member States, which constitutes a distributed use of the invention, can be aggregated, so that a patent infringement can be affirmed. Under a regime of national, fragmented rights such an aggregation is in principle not allowed. This difference in the reach of protection between a unitary patent and a bundle of national rights may become significant in such fast-growing technical fields as computer-implemented inventions, telecommunications and medical technology.
In cases of geographically distributed use of technologies unitary patents will also provide competitors with a higher degree of legal certainty. The alleged infringer will not run the risk of being exposed to multiple damage claims for an economically unitary activity carried out in the EU only because the use of the invention was distributed in more than one country. Under a unitary patent regime a duplication of damage claims is a priori excluded. For the same activity carried out within the participating Member States the infringer may be sued only once and for the violation of a single right only.
However, the unitary patent will not solve all problems arising from a geographically distributed use of patented inventions. As soon as a single step of a patented method or system is practiced outside the EU the question arises again as to whether and under which circumstances a unitary patent may still be found infringed. In these cases the UPC Divisions will be entitled to ask for guidance from the CJEU. Indeed, Article 5 UPR and Article 25 UPCA implement the obligations from Article 28(1) TRIPS, which is an integral part of the Union’s legal order. Questions related to the interpretation of Article 28(1) TRIPS hence may and must be remitted to the CJEU.
Keywords: Unitary and European Patent, principle of territoriality, divided patent infringement, TRIPS, method claims, damages
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