Article 28

Right based on prior use of the invention

Any person, who, if a national patent had been granted in respect of an invention, would have had, in a Contracting Member State, a right based on prior use of that invention or a right of personal possession of that invention, shall enjoy, in that Contracting Member State, the same rights in respect of a patent for the same invention.

Case Law

Court of Appeal

IPPT20260602, UPC CoA, Kodak v Fujifilm 
Infringement orders for UK and Germany set aside. No infringement in Germany because private prior use right of Kodak Graphic (Article 28 UPCA). 

Court of First Instance

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

No UK prior use rights (Article 28 UPCA), at least Defendants did not submit sufficient facts so as to establish that they had also made the final business decision within the Kodak Group to commercialize printing plates with the features of the claimed invention before the relevant priority date. 

IPPT20250410, UPC CFI, LD Düsseldorf, Yellow Sphere v Tabbert

No prior use right (Article 28 UPCA). The user of the technology according to the invention can only rely on the rights granted to him by the respective national regulations of the respective contracting member states. In this respect, the existence of a prior right of use must be asserted for each of the protected states under its conditions. The provision does not provide for a European right of prior use, but rather a sliding reference to the respective national law. Whether a right of prior use, as asserted by the defendant, must always be asserted by way of a (counter) action or whether it can also be raised merely by way of a defence against the allegation of infringement does not need to be examined in detail in the present case. Possession of the invention alone is not sufficient, it must also be used. In any case, arrangements must have been made for its use for thus purpose. For the latter it is necessary that the person invoking Section 12 PatG has made a form and definitive decision to commercially exploit the invention. In addition, they must have taken steps to prepare for the rapid implementation of the decision and have the intention to exploit the invention. In order to meet the requirements, two conditions must therefore be fulfilled: First, there must be legal action aimed at the substantial implementation of the invention. Second, these actions must demonstrate a serious intention to use the invention in the near future […]. Mere preparatory acts for the purpose of exploring the possibility and expediency of commercial exploitation are not sufficient, nor are preparatory acts for a later planned execution […]. 

IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - I
No private prior use in Germany in accordance with German law (Article 28 UPCA. § 12 German Patent Act. Defendants did not submit sufficient facts so as to establish that they had also made the final business decision within the Kodak Group to commercialize printing plates with the features of the claimed invention before the relevant priority date.

IPPT20240703, UPC CFI, LD Düsseldorf, Kaldewei v Bette
No prior use rights in each Contracting Member State (article 28 UPCA). The narrow wording of the provision is clear. The user of the technology according to the invention can only invoke the rights granted to him by the respective national regulations of the respective contracting member states. In this respect, the existence of a right of prior use must be submitted for each of the protected states under their conditions. The standard does not provide for a European right of prior use, but is a sliding reference to the respective national law.