OLG Karlsruhe: Infringement of a European patent – national law or UPCA?

In patent infringement proceedings concerning the German part of a European patent without unitary effect, the Higher Regional Court of Karlsruhe has issued a decision with reference to the Agreement on the Unified Patent Court (UPCA).

Accordingly, claims for infringement of the German part of a European patent without unitary effect brought before a national - in this case German - court are governed by the provisions of national patent law (here: EPC in conjunction with PatG and Art. II § 1 IntPatÜbkG) - but not by the provisions of the UPCA.

How is this to be assessed?

UPC and UPCA

Since 1 June 2023, the Unified Patent Court (UPC) has jurisdiction for infringement and revocation actions relating to a Unitary Patent, a European patent without unitary effect which had not yet lapsed at the time of the UPCA's entry into force or which was granted after that date, or a European patent application which was pending at the time of the UPCA's entry into force or which was filed after that date.

The UPC is currently designed as a court for 24 EU member states. This may come as a surprise, as only 17 EU states currently participate in the Unitary Patent.

The reason for this is the UPCA, which has been signed by 24 EU member states. These are all current EU member states with the exception of Croatia, Poland and Spain. Yet, only 17 of the 24 signatory states have ratified the UPCA to date.

The UPCA assigns jurisdiction for infringement and revocation actions for Unitary Patents and European patents without unitary effect as well as other proceedings to the UPC and contains provisions and regulations for proceedings before the UPC.

The UPCA and the UPC are designed exclusively for EU member states and only they can participate - unlike the European patent, which is valid as a bundle of patents in the 39 EPC member states.

European patent with unitary effect = Unitary Patent

The Unitary Patent is a European patent with unitary effect. As a patent applicant, you first apply to the European Patent Office (EPO). The patent application is filed and examined there. As soon as the decision on the grant of the European patent has been issued (OJ EPO 2023, Supplementary Publication 3, 5), a request for unitary effect can also be filed with the European Patent Office, but at the latest within one month of the publication of the mention of the grant of the patent.

If no request for unitary effect is filed, the classic European patent is granted, a bundle of 39 national patents that can be validated, maintained or surrendered nationally as usual. Such a European patent without unitary effect is the patent in suit in the present case.

UPCA decision of the OLG Karlsruhe

In its recent decision the Higher Regional Court of Karlsruhe (OLG Karlsruhe, 6 U 232/22) dealt with claims for damages due to patent infringement of the German part of a European patent without unitary effect relating to a cutting machine. The Mannheim Regional Court as first instance had upheld the patent infringement action and also the claim for damages and rendering accounts - under German law (EPC in conjunction with the German Patent Act and Art. II § 1 IntPatÜbkG). The defendant appealed against this decision.

In this dispute, substantive law provisions are decisive, explained the Court in Karlsruhe. The appeal merely countered the Regional Court's judgement that the defendant had committed patent infringement (by marketing the challenged embodiment in the sense of § 9 PatG) by arguing that the challenged embodiment did not fall within the scope of protection of the patent claim. The contested judgement is therefore not based on an infringement of rights, the OLG Karlsruhe said.

The Agreement on a Unified Patent Court pursuant to Art. 3 lit. c UPCA applies in principle to the patent in suit, namely without prejudice to Art. 83 UPCA, according to OLG Karlsruhe. However, this does not change the fact that the substantive law provisions are decisive in the present case, the court explained as a leading principle.

UPCA Leading principle

The Court said that the provisions in Art. 56 et seq. UPCA only concern powers of "the court". In the UPCA, however, this always refers to the Unified Patent Court, the UPC (see Art. 2(a) UPCA).

Insofar as the Agreement also codifies "substantive law" in Art. 25 et seq. UPCA, in the opinion of the OLG Karlsruhe, it follows from the systematic context that this "substantive law" is only applicable in proceedings before the Unified Patent Court, to which these provisions solely apply (with reference to Art. 24 para. 1 lit. b UPCA; in conclusion also Bopp in Bopp/Kircher, EurPatentprozess-HdB, 2nd ed, § 9 para. 67 et seq.).

Moreover, application of Art. 25 et seq. UPCA would not lead to a different legal assessment of the dispute, the court added.

The appeal was unsuccessful, decided the OLG Karlsruhe (OLG Karlsruhe, 14 february 2024, 6 U 232/22).

Tip for the practice: UPC or not?

According to the court, it is not decisive in the present case whether a decision is made according to national law or the UPCA. But a unitary patent and proceedings before the UPC can have advantages and disadvantages. Much depends on how many EU member states the patent is to be applied for or defended in.

If you are unsure whether a unitary patent or UPC proceedings are a good alternative, please contact us.

For European patents without unitary effect there is also the option of excluding the UPC proceedings via an opt-out for a transitional period until 2030, possibly even until 2037.

Please contact us by telephone on +49 69 69 59 60-0 or send us an email info@kollner.eu.