Article 25

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Right to prevent the direct use of the invention

A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from the following:

(a) making, offering, placing on the market or using a product which is the subject-matter of the patent, or importing or storing the product for those purposes;

(b) using 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;

(c) offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject-matter of the patent.

 

Case Law:

 

Court of First Instance

 

IPPT20250114, UPC CFI, LD Düsseldorf, Ortovox v Mammut
Revocation action unfounded, patent infringed. Direct infringement of product claim (Article 25(a) UPCA) even though voice control feature requires activation. If a device in the offered or offered or sold is not yet suitable for making use of all the features of the patent claim because the customer must first activate certain functions, the alleged infringer must accept responsibility for the conduct of his customers if he instructs them to activate the device in such a way or if he deliberately exploits such activation by the customer in the knowledge that such activation will take place. even when voice control feature must be activated. 

 

IPPT20241218, UPC LD Munich, Huawei v Netgear
Injunction regarding SEP patent. FRAND Defence  (Article 25 UPCA), Article 102 TFEU). A declaration of willingness to licence should be assessed solely on the basis of the content, and not on subsequent conduct, should contain a declaration to that effect, and should not be confused with an offer/a counter-offer. A counter-offer from the implementer must be accompanied by a security at least in the amount of the counter offer, and must be accompanied by a binding undertaking that the patentee will receive the security as a licence payment if his offer ultimately is legally affirmed. Implementer cannot claim a patentee has a dominant market position if it also claimed the patent is not standard essential. The defendant (relying on FRAND defence) has the burden of proving the dominant market position of the patentee. The patent cannot give the patentee a dominant market position if the defendant also relies on the argument that the patent is not standard essential.

 

IPPT20241113, UPC CFI, LD Paris, HP v Lama
No need to apply national law regarding acts of infringement occurring before 1 June 2023 (Article 25 and 26 UPCA). In the territories of the Contracting States that signed the UPCA of 20 June 2013, the acts referred to in Articles 25 and 26 UPCA were already considered to be infringements qualified as acts of infringement by European patent law (Article 69 EPC) or in the national laws of those States that were harmonised by Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights relating to infringements of existing European patents. No prior knowledge of infringement required (Article 25 UPCA). The text does not require the plaintiff to prove that the defendant had prior knowledge of the existence of the patent and the materiality of the alleged infringement. 

 

IPPT20241031, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Provisional injunction with exception granted for direct and literal infringement (R. 211 RoP, Article 62 UPCA, Article 25 UPCA, Article 69 EPC). It is more likely than not that the patent in suit is infringed by the offer and distribution of the challenged embodiments in the territory of the Contracting Member States Germany and France (R. 211.2 RoP).Slovakian manufacturing company is liable for the offering and delivering of the challenged embodiments, even if the order does not cover the territory of Slovakia (Article 25 UPCA). The Düsseldorf Local Division has already decided that companies which are members of a group and play a key role in a distribution network for the infringing product – such as a sole manufacturer or a European sales and marketing hub – may be considered as infringers even if they are located outside the Contracting Member States but supply their products to other members of the group located in the Contracting Member States, while those companies distribute those products on the European market, including at least one Contracting Member State where the patent in suit is valid. On this basis, Defendant 2) is liable for the offering and delivering of the challenged embodiments, even if the order does not cover the territory of Slovakia. A more extensive order covering manufacture in Slovakia, which is not a Contracting Member State yet, is not considered in the case at hand. The Defendants are cumulatively liable because they act in a close and interdependent relationship due to their structure as a large group of companies

 

IPPT20241015, UPC CFI, LD Lisbon, Ericsson v Asustek
Owning the domain www.asus.com is infringing (Article 25(a) UPCA) as it is evident that through this domain and its sub-domains, products containing the accused Modules are offered and sold.

 

IPPT20241010, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce - I
Direct literal infringement (Article 25 UPCA). Since the attacked embodiment makes literal use of the technical teaching of the patent in suit, the defendants infringe the patent in suit directly and literally by offering and distributing the attacked embodiment. Presumption of acts of infringement. By offering and marketing the challenged product, the Defendants have also committed acts of infringement within the meaning of Art. 25(a) UPCA. At the same time, offering and putting on the market also creates a rebuttable presumption that the defendants are also using the challenged product, importing or possessing it for the purposes of offering, putting on the market or using it. 

 

IPPT20240913, UPC CFI, LD Munich, Philips IP v Belkin
A patent infringer is the person who appears as the manufacturer or supplier or gives the impression to the targeted public that he is the person who manufactures and/or sells the goods in his own name and for his own account (Article 25 and 26 UPCA, EU Enforcement Directive). Intermediary. In case of a patent infringement by a corporation its directors may be liable for injunctive relief as intermediaries but not for damages (Article 63(1) UPCA)

 

IPPT20240906, UPC CFI, LD Düsseldorf, Novartis v Celltrion
Application for preliminary measures unfounded: Defendant’s conduct does not already constitute an imminent infringement, i.e. offering of infringing product (Article 62(1) UPCA) (Article 25(a) UPCA). In order for a patent infringement to be considered imminent, there must be concrete indications in the overall circumstances that an infringement is imminent. It is sufficient for an offer if the act in question actually creates a demand for the product which the offer is likely to satisfy. Cumulative liability defendants because they acted in a close and interdependent commercial relationship based on their structure as a large group of companies (Article 25 UPCA). Patent infringement of European bundle patents before the UPC is subject to uniform substantive law (article 25 UPCA) and uniform procedural law (article 62(1) UPCA) instead of different national laws.

 

IPPT20240827, UPC CFI, LD Munich, Syngenta v Sumi Agro
In case of a product claim directed to a composition it is sufficient for the applicant to allege and prove that at the time of any act of use under Art. 25 UPCA by the respondent, the attacked composition had all the features of the patent claim or that there is an imminent danger that such an act of use directed to such a composition will be carried out by the respondent in the future. It is not on the applicant to plead and prove why the composition had all features of the patent claim. Risk of infringement in Contracting States by distributing the 2023 product outside the Contracting States, namely in the Czech Republic, and by advertising "KAGURA" within the Contracting States. The Respondents have in any event created a risk of first infringement that patent-infringing compositions will be manufactured, advertised and distributed by them in the territory of the Contracting States in the future (Art. 25(a), 62(1) UPCA). In the circumstances of this case, in order to eliminate the risk of first infringement, the Respondents should have offered a cease-and-desist declaration with a penalty clause in respect of the 2023 product. 

 

IPPT20240827, UPC CFI, LD Munich, Hand Held Products v Scandit

Preliminary injunction for indirect infringement (Article 62 UPCA, R. 211.2 RoP). Sufficient degree of certainty for provisional measures regarding indirect infringement, not regarding direct infringement (Article 62(4) UPCA, Rule 211(2) RoP, Article 25 UPCA, Article 26 UPCA)). Direct infringement (article 25 UPCA) uncertain with constellation. In certain constellations a direct infringement is unproblematically the case, for example, if a kit for assembly into a complete device is supplied by the customer including assembly instructions and the complete device does not function if it is assembled in a different way. However, due to the large number of different programming options and possibilities for assembling the hardware components, it is not certain with the necessary concreteness that the customer produces a patent-compliant overall device.

 

IPPT20240823, UPC CFI, LD Lisbon, Ericsson v Asustek
Leave for an unconditional limitation of the scope of the initial claim (Rule 263(3) RoP). Defendant Arvato should no longer be considered to be infringing according to Art. 25(a) UPCA, but regarded as an intermediary according to Art. 62(1) UPCA, whose services are used by the other Defendants to infringe the Patent.

 

IPPT20231211, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Direct use of the invention (article 25 UPCA). Element of suppression (“Unterdrückung”) is fulfilled. 

 

IPPT20231205, UPC CFI, LD Munich, 10x Genomics v Nanostring

“Offering” (Article 25 UPCA) includes any act committed within the scope of the patent in question which, according to its objective explanatory value, makes the subject-matter of the demand available in an externally perceptible manner for the acquisition of the power of disposal.

 

IPPT20231018, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Offering a product which is the subject matter of the patent (article 25(a) UPCA) is to be understood in purely economic terms. In the case of a product, it includes any act committed within the scope of the European patent which makes the subject-matter of the demand available. Therefore, the display of goods within the scope of the respective patent taking place at a trade fair taking is an offering within the meaning of this provision. In order to be offered, not all features of the patent claim need to be shown in the advertising and thus also on a trade fair stand if it must be assumed, when objectively considering the circumstances actually given in the case in dispute, that the product shown corresponds in its technical design to the subject-matter of the patent. It depends on whether it can be reliably concluded from the existence of other objective circumstances that the product is in conformity with the patent. An essential aspect in this respect is the view of the relevant public as to the objective explanation in the advertising, which must be determined taking into account all the factual circumstances of the individual case.