All these hot topics in the UPC’s latest decision Brita vs Aquashield of August 22, 2025: UPC_CFI_248/2024
Suitability for fulfilling the intended purpose according to UPC
The purpose statements in a device claim generally define a device as being suitable for the function and purpose specified in the patent claim.
On this regard, a look into the Austrian case law is helpful: Back in 2010, the Austrian Supreme Court already emphasised that a product which is not suitable for the use specified in the patent does not fall within the scope of protection of a use claim. To assess this, a ‘practically reasonable standard must be applied which leaves no room for sophisticated consideration’ Austrian Supreme Court on February 9, 2010, 17Ob35/09k).
Purpose and novelty
If a device claim contains a purpose specification, the only thing that’s usually relevant for the novelty check under Art. 54 EPC is whether a device that has all the physical features that the patent requires for the device is already disclosed in the prior art. This does not apply if the device disclosed in the prior art is unsuitable for the intended purpose of the patent or requires modification before it can be used for that purpose.
Exhaustion upon intended use – ‘normal maintenance and restoration of usability’ vs. ‘remanufacturing’
The purchaser of a product placed on the market by the patent proprietor is, among other things, entitled to use that product for its intended purpose. In this respect, exhaustion has occurred.
Intended use also includes the normal maintenance and restoration of usability if the functionality or performance of the specific product is impaired or eliminated in whole or in part due to wear and tear, damage or other reasons.
However, intended use does not include any measures that result in the remanufacturing of a product covered by the patent. The exclusive right of manufacture of the patent holder is not exhausted when a copy of the product covered by the patent is placed on the market for the first time.
If part of a product covered by a patent is replaced, the decisive factor in determining whether this constitutes use in accordance with the intended purpose or a new production is whether the replacement preserves the identity of the specific patented product placed on the market or whether this creates a new product in accordance with the invention. This is assessed on the basis of a weighing of the interests worthy of protection of the patent proprietor in the economic exploitation of the invention on the one hand and of the purchaser in the unhindered use of the specific product of the invention placed on the market on the other, taking into account the unique character of the product protected by the patent.
If the replacement of the part in question can normally be expected during the product’s lifetime and if the public or the purchasers therefore legitimately expect to be able to continue using or reuse the purchased product by means of the replacement part, the use of the patented product placed on the market is generally considered to be permissible. However, the situation is different in exceptional cases where the technical effects of the invention are reflected precisely in the replaced part.
Scope of the injunction in the case of indirect infringement
If an infringing embodiment that indirectly infringes the patent pursuant to Art. 26 UPCA can also be used without patent protection, only a limited prohibition is justified, which ensures that, on the one hand, commercial transactions involving the infringing product outside the scope of the property right remain unaffected and, on the other hand, the direct infringing use by the purchaser is excluded with sufficient certainty. Warning notices and/or contractual cease-and-desist agreements are generally considered suitable measures for this purpose.
Art. 64 UPCA does not apply to indirect patent infringement pursuant to Art. 26 UPCA. Consequently, in particular, no declaration of patent infringement can be made.