Article 26

Print this page

Right to prevent the indirect use of the invention

1.   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.

2.   Paragraph 1 shall not apply when the means are staple commercial products, except where the third party induces the person supplied to perform any of the acts prohibited by Article 25.

3.   Persons performing the acts referred to in Article 27(a) to (e) shall not be considered to be parties entitled to exploit the invention within the meaning of paragraph 1.

 

Case Law:

 

Court of Appeal

 

IPPT20240903, UPC CoA, Aylo v Dish
UPC jurisdiction because of place of harmful event (Article 7(2) and 71(b(1) Brussels I recast). UPC has international jurisdiction in respect of an infringement action where the European patent relied on by the claimant has effect in at least one Contracting Member State and the alleged damage may occur in that particular Contracting Member State. The identification of the place where the harmful event occurred or may occur […], does not depend on criteria which do not appear in this provision and which are specific to the examination of the merits, such as the conditions for establishing an indirect infringement within the meaning of Art. 26 UPCA. Places of article 33(1(a) UIPCA and article 7(2) Brussels I Recast are the same.

 

Court of First Instance

 

IPPT20250114, UPC CFI, LD Düsseldorf, Ortovox v Mammut
Indirect infringement of process claim (Article 26(1) UPCA). The defendants advertise the suitability of the challenged embodiment for additional speech output in all search phases. It is therefore obvious not only from the circumstances that the defendants know that the challenged embodiment is objectively suitable for use in a manner infringing the patent, but also that customers of the challenged embodiment will use it to carry out the method according to the patent. The defendants should therefore have been aware in any case of the objective suitability for use in accordance with the patent and the intention of the users to use it.

 

IPPT20241122, UPC LD The Hague, Plant-e v Arkyne
Indirect infringement method claim (Article 26 UPCA). Bioo has also provided Bioo Panels and Bioo Benches to third parties. In that case Bioo indirectly infringes claim 11 because it does not apply the method itself, yet it provides Bioo Panels or Benches, which are an essential part for applying the method of claim 11.

 

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. 

 

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)

 

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)). Urgency (Rule 209(2)(b) RoP, Rule 211(3) RoP). As soon as the applicant has all knowledge and documents that reliably enable a promising legal action, he must regularly file the application for interim measures within two months. In case of an injunction to prevent indirect infringement it must always be considered whether a relative prohibition or an absolute prohibition should be issued in view of the remaining possibilities for the patent infringer to offer or supply the essential means for other, non-infringing purposes. Indirect infringement (article 26 UPCA): it must regularly be assumed that the supplied party will use the means in the manner suggested to it in the supplier's advertising messages, instructions for use and other documents.

 

IPPT20240703, UPC CFI, LD Düsseldorf, Kaldewei v Bette
Direct (undisputed) infringement (Article 25 UPCA) and indirect infringement (Article 26 UPCA). Indirect infringement requires a double territorial connection. This means that, on the one hand, the offer and/or delivery must take place in the territory and, on the other hand, the invention must also be used in the territory. Not necessary to decide the question whether in case of a European (bundle) patent subject to the UPCA without unitary effect, it is sufficient that the offer/supply takes place in one of the contracting member states in dispute and is intended for direct use of the invention in the other protected states, or whether, it must be required that the unlawful act is directed to the same Contracting Member State in which the direct patent infringement is realised by the supply. 

 

IPPT20231211, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Indirect use of the invention (article 26 UPCA). Obvious from the circumstances that the defendants know that the accused embodiment is objectively suitable for being used in a patent-infringing manner, and also that the customers of the accused embodiment use it to carry out the patent-compliant process.