Article 29

Exhaustion of the rights conferred by a European patent

The rights conferred by a European patent shall not extend to acts concerning a product covered by that patent after that product has been placed on the market in the European Union by, or with the consent of, the patent proprietor, unless there are legitimate grounds for the patent proprietor to oppose further commercialisation of the product.

Case law

Court of First Instance

IPPT20251210, UPC CFI, LD Dusseldorf, MAS Maschinen v Altech
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. 

IPPT20250822, UPC CFI, LD Munich, Brita v Aquashield
Exhaustion of patent rights in case of use of the product for its intended purpose, to sell it to third parties or to offer it to third parties for one of these purposes (Article 29 UPCA). The intended use of a patent-protected product also includes the usual maintenance and restoration of its usability if the functionality or performance of the specific product is wholly or partially impaired or eliminated due to wear and tear, damage or other reasons. However, the intended use does not include any measures that result in the reproduction of a patented product. The patent holder's exclusive right to manufacture is not exhausted when a copy of the patented product is placed on the market for the first time. One factor to be considered in this assessment is whether the replacement or substitution of the part in question can normally be expected during the product's lifetime and whether, as a result, the market or consumers can reasonably expect to be able to continue using the purchased product or to use it multiple times by means of the replacement part. If this is the case, it can generally be assumed that this is a normal maintenance measure and thus a permissible use of the patented product placed on the market. However, the situation is different in exceptional cases where the technical effects of the invention are reflected precisely in the replacement part. In such cases, the replacement of the part means that the technical and economic advantages of the invention are realised once again and the identity of the patented product originally placed on the market is lost. The assumption of exhaustion fails because the filter cartridge offered and distributed by the plaintiff does not itself have the features of a filter cartridge according to claim 1 as amended in auxiliary request 16. 

IPPT20241218, UPC LD Munich, Huawei v Netgear
Injunction regarding SEP patent. No exhaustion (Article 29 UPCA) In the context of patent law, restrictions in a licence agreement regarding the right to use products placed on the market on the basis of the licence have no influence on the exhaustion the occurrence of the exhaustion effects. The burden of proof for placing on the market in the European Union with the consent of the patent proprietor lies with the implementer. Insofar as the objection of exhaustion relates to all the challenged embodiments, it must be dealt with immediately in the proceedings. If the objection is successful, the action must be dismissed. If the objection of exhaustion does not relate to all the challenged embodiments, it depends on the circumstances of the individual case whether and to what extent the objection is to be dealt with immediately or only in the context of enforcement. 

IPPT20241113, UPC CFI, LD Paris, HP v Lama
Exhaustion of rights and jurisdiction (Article 29 UPCA). It is therefore for the Court to consider whether the evidence adduced by HPDC is sufficient to show that the allegedly infringing HP cartridges were indeed placed on the market by LAMA in the territory of the EU after having been the subject of unauthorised parallel imports and therefore do not fall within the exception of exhaustion of rights provided for in Article 29 UPCA, that is to say that those cartridges were not first marketed by HP within the EU. No need to refer to the CJEU as the competition law defense is clearly ineffective (R. 266 RoP). 

IPPT20230622, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Ex parte provisional injunction regarding Germany, the Netherlands, France and/or Italy and seizure of goods suspected of infringement. No exhaustion because respondent is not licensed to create from components supplied by Fairy Bike a combination falling within the scope of protection of the patent.