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As noted recently the Secondary Legislation Scrutiny Committee has been considering the secondary legislation being used to bring the UPC system into effect in the UK. Of interest in their report is the additional clarifications received in respect of the inclusion of the infringement exception at Article 27(k) of the UPC Agreement into UK law, the computer program exception.
The Committee’s report details comments raised on the draft Order from Baroness Bowles of Berkhamstead including comments relating to the computer program exception. The Committee had put the Baroness’ concerns to the Department for Business, Innovation and Skills (BIS). The full reply from BIS can be found in the Appendix to the Report.
When the Government assessed how to implement the UPC Agreement into UK law it considered how the computer program exception would be implemented. Although the initial proposal was for it to apply to all patents (UK national and classical EP patents as well as unitary patents), this was met with concern in some quarters that the scope of the exception was not understood. This led to the Government proposing that the exception would not be applied to UK national patents such that a “safe haven” would be created for UK national patents. The situation would be reviewed within 5 years of the entry into force of the provisions.
A number of commentators had suggested that this safe haven would put the UK at odds with its obligations under Articles 2 and 64 of the European Patent Convention requiring that European patents would be subject to the same conditions as UK national patents.
The reply from BIS confirms that, in the Government’s view, the “safe haven” approach is compatible with our obligations under the EPC. In particular the following points were noted:
Article 2 of EPC states (emphasis added)
The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise.
In other words Article 2 recognises that the EPC may allow national patents to be subject to different conditions if the EPC says otherwise somewhere
Article 64 EPC states (emphasis added)
(1) A European patent shall … confer on its proprietor …the same rights as would be conferred by a national patent granted in that State.
…
(3) Any infringement of a European patent shall be dealt with by national law.
So although Article 64 says the same rights shall be conferred, it is recognised that infringement provisions are dealt with in Member States. However, as highlighted in an Interpretative Note from the Preparatory Committee:
- The legislator has clearly not chosen to achieve a uniform application of substantive patent law through obligatory harmonisation of national patent law. There is no provision in the Agreement that obliges the contracting states to do so.
Article 149a EPC states
(1) Nothing in this Convention shall be construed as limiting the right of some or all of the Contracting States to conclude special agreements on any matters concerning European patent applications or European patents which under this Convention are subject to and governed by national law
In other words, this relates to the “provides otherwise” wording of Article 2 EPC.
The upshot of all the above, according to BIS, is that Article 149a EPC allows Member States to conclude special arrangements. Article 27 of UPCA is regarded as one such special arrangement that changes the infringement provisions of EP patents but, in accordance with the Interpretative Note, the Member States have decided not to necessarily do the same for national patents which remain subject to national law. BIS therefore regards that it is “possible for a national patent to have different infringement provisions to those of a European patent or unitary patent”.
Mark Richardson 22 March 2016
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I’m not sure the BIS reasoning is complete
Whether the EPC (and the UPCA) allows different infringement laws in the UK to other states isn’t at issue, the issue is giving rights to a proprietor of a UK patent that are not also be given to a proprietor of an EP(UK). What special arrangement states that the UK can give UK national patents an additional right not given to EP(UK)s?
Because infringement is a matter of national law it can be argued (as BIS appear to do) that Art 149a means that the infringement sections UPCA can’t be limited by the EPC. Consequently following BIS’s argument it would not be possible for a patentee using the UPC to argue that a 3rd party falling within the interoperabilty exception infringes on the basis that there would be infringement of a UK national. Art 149a arguably trumps Art 64(1).
But what about the other way round? Could an infringer of a UK national who falls within the exemption argue that giving the patentee a right to stop them violates the EPC because that right is not also given to EP(UK)s . Would violating the EPC enough for the right to be ultra vires?
Of course this issue only matters if the interoperability exception is ever found to have any relevance to patents beyond what is already covered by exhaustion.