The Territoriality Principle and Transnational Use of Patented Inventions – The Wider Reach of a Unitary Patent and the Role of the CJEU

• Published in: IIC - International Review of Intellectual Property and Competition Law 2013, Vol.44 (5), p.524-540
• Main Authors: Romandini, Roberto, Klicznik, Alexander
• Format: Article
• Language: English
• Subjects: Intellectual Property; IT Law; Law; Law and Criminology; Media Law
• ISSN: 0018-9855; 2195-0237
• DOI: 10.1007/s40319-013-0059-9

The Unitary Patent Regulation has a significant impact on cross-border use of patented inventions in the participating Member States as the protection conferred by a unitary patent is “wider” than that conferred by a bundle of national rights. This is true even when the bundle of national rights is in force in the whole territory for which a unitary patent is issued. The unitary character of the latter calls for a unitary character of the territory of protection, that is, the absence of national borders within the market covered by the exclusive right. This has practical consequences if the defendant has practised all features of the patent claim, but not within the same national jurisdiction. Indeed, several different acts committed by the same actor (or actors) in various Member States, which constitute a distributed use of the invention, can be aggregated, so that a patent infringement can be found. Under a regime of national, fragmented rights such an aggregation is in principle not allowed. In cases of geographically distributed use, unitary patents will also provide competitors with a higher degree of legal certainty. An infringer will not run the risk of being exposed to multiple damage claims for an economically unitary activity carried out in the EU merely because the invention was used in more than one country. For the same activity carried out within the participating Member States the infringer may only be sued once for the violation of a single right. However, the unitary patent will not solve all problems arising from geographically distributed use of patented inventions. As soon as a single step of a patented method or system is practised outside the EU, the question again arises as to whether and under what circumstances a unitary patent may still be infringed. In such cases the UPC Divisions will be entitled to ask for guidance from the CJEU as Art. 5 UPR and Art. 25 UPCA implement the obligations under Art. 28(1) TRIPS, which is an integral part of the Union’s legal order. Questions related to the interpretation of Art. 28(1) TRIPS must hence be referred to the CJEU.