Article 26

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

IPPT20260417, UPC CoA, Abbott v Sinocare
Indirect infringement by Respondent 2 by offering and supplying to diabetes patients for their private and non-commercial use (Article 26 UPCA). In its brochures, via its website and at various exhibitions, Respondent 2 has promoted and sold the Sensor Assembly and the On-Body Device of the GlucoMen iCan in the UPC territory for use together with the iCan App to be installed on the users’ mobile phones. Indirect infringement by Respondent 1 (i) by active involvement in the marketing and (ii) as someone to whom the acts of Respondent 2 are attributable as instigator, accomplice or accessory because of its strategic partnership with Respondent 2 (Article 26 UPCA, Article 63 UPCA).  

IPPT20260327, UPC CoA, Onward v Niche
Indirect infringement (Article 26 UPCA). Intended use: The intended use pursuant may be determined and presumed on the basis of objective circumstances if such circumstances exist that allow for the sufficiently certain conclusion that the product offered or delivered is intended to be used by the recipient of the offer or the recipient of the delivery for the purpose of utilizing the invention. Insufficient evidence that users intended or were instructed to use the product in an infringing way. Intended use can be inferred from objective circumstances such as instructions, product design, or actual use. The manuals did not clearly teach or recommend an infringing configuration. The device could be used in non-infringing ways, weakening any inference of intent.

IPPT20260217, UPC CoA, Rematec v Europe Forestry
Indirect infringement of method claim 15 (Article 26 UPCA). Apparent that the contested mill is suitable for carrying out the method of claim 15. Also applies when it is used in accordance with the information in the Defendant’s brochures and the Defendant, as a specialized company that published the brochure, was also aware of that. Corrective measures and indirect infringement remains undecided (Article 26 UPCA, Article 64 UPCA). No decision is required, as an order concerning the contested embodiment already results from the direct infringement of patent claim 1. It can therefore remain undecided whether corrective measures pursuant to Article 64 UPCA can be ordered at all in the event of (only) an indirect patent infringement being found and, if so, under what circumstances the ordering of corrective measures in the event of an indirect patent infringement meets the requirement of proportionality pursuant to Article 64(4) UPCA. 

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.

IPPT20241029, UPC CoA, Belkin v Philips
Manifest error of law that managing directors of a company are intermediaries within the meaning of Art. 63(1) UPCA solely on the basis of their function as managing directors. A managing director of a patent infringing company represents that company. This company cannot therefore be a ‘third party’ within the meaning of Art. 63 UPCA and Art. 11 of the Directive 2004/48. 

Court of First Instance

IPPT20260318, UPC CFI, LD Düsseldorf, Cup&Cino v Alpina

Patent valid and infringed (Article 65 UPCA , Article 25(a) UPCA , Article 26 UPCA). Permanent injunction granted for recall and destruction of goods. (Article 63(1) UPCA) 

IPPT20260115, UPC CFI, LD Düsseldorf, Ona Patents v Google
Patent valid (Article 65 UPCA) but not infringed. (Article 25 UPCA)  No direct infringement because not every claimed component is shown. (Article. 25 UPCA) If a product consists of different components, the alleged infringing product must show every claimed component. Cases where only certain features of a product are infringed may be examples for an indirect infringement (Article. 26 UPCA), but not for direct infringement.  Order of judge rapporteur not allowing the exchange of further written pleading and not allowing late amendment of the case to include indirect infringement confirmed by panel (Rule. 36 RoP, Rule. 263 RoP, Rule. 333.2 and 333.3 RoP) 

IPPT20251210, UPC CFI, LD Dusseldorf, MAS Maschinen v Altech
Direct and indirect patent infringement (Article 25 UPCA, Article 26 UPCA). Indirect infringement – exhaustion regarding replacement part intended for use in claimant’s systems (Article 26 UPCA, Article 29 UPCA). To be assumed that the replacement or exchange of the part in question is normally to be expected during the product’s useful life and whether the public or consumers can therefore reasonably expect to be able to continue using the purchased product, or to use it on multiple occasions, by means of the replacement part. Indirect patent infringement - recall , removal from distribution and destruction (Article 26 UPCA, Article 64 UPCA). Orders for recall, removal from the channels of commerce and destruction are generally not considered in cases where products are only challenged on the grounds of indirect patent infringement. 

IPPT20251014, UPC CFI, LD Düsseldorf, Ona v Ekahau
Request for Further exchanges of written pleadings dismissed. Written proceedings closed. (Rule 35 RoP, Rule 36 RoP) . late filed requests relating to indirect infringement and relating to the amended form of the patent concerning indirect infringement are not admissible and not taken into account. (Article. 26 UPCA).

IPPT20251010, UPC CFI, LD The Hague, HL Display v Black  (In)direct infringement (Article 26 UPCA).  As to the shelf accessory or rear securing device sold separately, the Court opines that HL Display has sufficiently substantiated that both the shelf accessory and the rear securing device of the BSRP Product are means relating to essential elements of the invention. BSRP also does not deny that it knew or should have known that those means are suitable and intended for putting the invention of EP 351 into effect.  
 

IPPT20250822, UPC CFI, LD Munich, Brita v Aquashield
If an embodiment that indirectly infringes the patent can also be used without infringing the patent (Article 26 UPCA) only a limited prohibition is justified, which ensures that, on the one hand, economic trade in the contested object outside the scope of the property right remains unaffected and, on the other hand, the direct patent-infringing use by the customer is excluded with sufficient certainty. Suitable measures for this purpose include, in principle, warnings to customers not to act in accordance with the patent-compliant teaching without the consent of the property right holder, as well as a contractual cease-and-desist agreement with the customer, which may be linked to the payment of a contractual penalty to the property right holder in the event of a breach of the cease-and-desist agreement.

IPPT20250718, UPC CFI, LD Mannheim, Fujifilm v Kodak - I

Direct and indirect infringement in the UK by German defendants (Article 25 UPCA, Article 26 UPCA). 

IPPT20250708, UPC CFI, CD Milan, Maschio Gaspardo v Spiridonakis Bros
Direct and indirect patent infringement (Article 25 UPCA, Article 26 UPCA), decision by default (R. 355. RoP). Indirect infringement (Article 26 UPCA). “Offer” is to be understood broadly: Since the attacked embodiment can be ordered online from [Germany, Italy, France and Bulgaria] (with shipment to Bulgaria or pick up in Greece), it is offered there. The requirements of Art. 26 with regard to the so called “double territoriality link” are met where the offer and the putting into effect are established with regard to the territory of the contracting member states where the EP is valid. It is not necessary that both the offer and the putting into effect refer to the same contracting member state, even with regard to “bundle patents”. 

IPPT20250219, UPC CFI, LD Hamburg, Lionra v Cisco
Infringement claim and counterclaim for revocation unfounded. The indirect and direct infringement action is unfounded (Article 25 UPCA, Article 26 UPCA). The indirect patent infringement of claim 1 of the patent in suit alleged by the plaintiff pursuant to Art. 26 (1) UPCA does not exist. In any case, there is no literal realisation of feature 1. b) and feature group 1. c) aa-bb by the attacked embodiments. Accordingly, there is also no direct infringement of claim 6 pursuant to Art. 25 UPCA. 

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.