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

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.