The double territoriality requirement of indirect infringement at the UPC

The Milan Central Division found that Spridonakis Bros GP infringed a patent for a reversible agricultural tool held by Maschio Gaspardo S.p.A. in a recent decision by default. 

In this case, the agricultural tool was available to order online in France, Italy, Germany and Bulgaria where the patent was in force. However, the tool was only available for pick up in Greece, or delivery to Bulgaria. In many examples of national law of UPC member states, in cases where an infringing act or an infringing product does not comprise all of the integers of a claim it is alleged to infringe (i.e. there is no direct infringement), a finding of indirect infringement may nevertheless be made, if “an essential element of the invention” is being supplied and the invention is put into effect in the same country. This is commonly referred to as the double territoriality requirement associated with indirect infringement. 

Art. 26(1) of the UPC agreement mirrors this requirement and states that: 

“A patent shall confer on its proprietor the right to prevent any third party […] from supplying or offering to supply, within the territory of the Contracting Member States in which that patent has effect […] means, relating to an essential element of that invention, for putting it into effect therein […].” 

In the present case, the tool was offered in Bulgaria and could be used in Bulgaria once delivered. Going further, however, the Court confirmed it is not necessary for the offer and the putting into effect to refer to the same UPC member state, and that indirect infringement had also occurred in France, Italy, and Germany.