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A violation of the validity of the patent in the EPO

Dec. 11, 2019

Many applicants, having received their long-awaited patent, have absolutely no idea what, in accordance with the norms of the legislation, is a violation of their exclusive rights and what is not a violation. This article focuses on what is the violation of the validity of a European patent in accordance with the provisions of the European legislation.

To begin with, it is necessary to find out what legislation establishes the rules of what is the violation of the patent and what is not the violation. In accordance with the provisions of the European Patent Convention, any violation of the European patent shall be considered by the national legislation. This provision is quite obvious due to the fact that the technical solution described and defended by the patent will be violated on the territory of a certain state.

Thus, in order to understand what actions will be the violation of the European patent, it is necessary to turn to the national legislation of the countries that are the members of the European Patent Convention. As an example, let us consider the patent legislation of Germany and Spain.

According to Paragraph 9 of the German Patent Law, only the right holder shall be entitled to use a patented invention within the framework of the current legislation. Any third party shall be prohibited without a consent of the right holder: manufacturing, supplying, offering for sale, other introducing into the civil circulation or using, importing or storing for this purpose of the patented invention, as well as using a method protected by the patent for an invention, or introducing into the civil circulation or storing for this purpose a product manufactured by the method protected by the patent. Thus, the German Patent Law establishes that the violation shall be unauthorized offering for sale or supplying a means relating to an essential element of the patented invention by the parties, who have not the right to use this invention on the territory of the validity of the patent, as well as importing into the territory of Germany this means by the parties being unauthorized to do so, in the case if the supplier has known or it is obvious from the circumstances that the products supplied by him are intended for the manufacture of the patented product or for the use of the patented method.

At the same time, there are a number of the actions that, in accordance with the German Patent Law, are not the violation of the validity of the patent. These actions include:

- the actions undertaken in a private sector for the non-commercial purposes;

- the actions for the experimental purposes relating to the subject of the patented invention;

- the use of the patented biological material for the selection, the discovery and the development of a new plant variety;

- research, tests and the practical requirements resulting from this, which are necessary to obtain the permissions for marketing medicinal products in the European Union or to obtain a permission for marketing in the member states of the European Union or in third countries;

- a direct individual preparation of medicines in pharmacies based on a prescription of a doctor and the actions related to the medicinal products prepared in this way;

- the use of the subject matter of the patented invention in the hull, equipment and other accessories on board the vessels of another member state of the Paris Convention for the Protection of Industrial Property, when the vessels temporarily or accidentally enter the waters covered by the German Patent Law, provided that such subject matter is used there exclusively for the needs of the vessel;

- the use of the subject matter of the patented invention in the manufacture or operation of the aircrafts or land vehicles of another member state of the Paris Convention for the Protection of Industrial Property or the accessories of such vehicles, which are temporarily or accidentally located on the territory covered by the German Patent Law.

Now, let us consider what is the violation of the European patent on the territory of Spain. According to the Spanish Patent Law, the patent gives its holder the right to prohibit any third party that does not have his consent:

- Manufacturing, offering for sale, introducing into the trade or using the subject matter of the product or importing, or possessing it for any of the above purposes;

- Using the patented method or offering such use, when the third party knows or the circumstances make it obviously clear that the use of the method is prohibited without the consent of the patent holder;

- Offering for sell, introducing into the commercial activity or using the product directly obtained by the patented method, or importing or possessing the said product for any of the said purposes. The patent also grants its holder the right to prevent the third party from supplying or offering for sale, without his consent, the means for the implementation of the patented invention relating to its most essential element to the parties not authorized to use it, when the third party knows or the circumstances make it clear that such means are suitable for the implementation of the invention and which are intended for it.

At the same time, the Spanish Patent Law, as well as the German Patent Law, contains a number of the actions that are not the violation of the patent. These actions include:

- the actions committed in a private sphere and for non-commercial purposes;

- the actions committed for the experimental purposes, which relate to the subject matter of the patented invention.

- carrying out the research and tests necessary to obtain a permission for the sale of the medicinal products in Spain or abroad, as well as the relevant practical requirements, including the preparatory actions, the preparation and use of an active substance for these purposes.

- preparing the medicines, which are to be made in pharmacies regardless of time and per unit while implementing a prescription of a doctor, or the actions related to the medicines prepared in this way.

- using the subject matter of the invention patented on the vessels of the member countries of the Paris Convention for the Protection of Industrial Property, in the hull of the vessel, the machinery, in the rigging, apparatus and in other parts, when these vessels temporarily or accidentally enter the Spanish waters, provided that the subject matter of the invention is used exclusively for the needs of the vessel.

- using the subject matter of the patented invention at constructing or operating the air vehicles or land vehicles, which belong to the member countries of the Paris Convention for the Protection of Industrial Property or its accessories, when these vehicles are temporarily or accidentally located on the territory of Spain.

Thus, in the case if the right holder according to the patent assumes that his exclusive rights are violated, it is necessary to contact the professionals in this field. The specialists will be able to establish definitely whether there are the reasons for writing a claim against the violator or whether the actions committed by the third party are legal.

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Author of article

Marianna Boykova

Marianna Boykova

Patent Attorney