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In a dispute involving a patent for a garden bed edging system, the UPC has addressed the issue of the breadth of what can constitute direct infringement, as opposed to actions falling into the category of indirect infringement.
In bellissa HAAS Gmbh v. Windhager GmbH UPC_CFI_338/2024 (12/09/2025), the Mannheim Local Division of the UPC rejected Windhager's counterclaim for revocation and held that Windhager's products infringed bellissa's patent. The court confirmed that offering or selling individual components of a patented product which was designed under the patent to be easily assembled at the place of use, can constitute direct patent infringement under Article 25(a) of the UPC Agreement (UPCA) even where the parts are offered unassembled or even separately as one of two or more components needed to be assembled.
Background
The infringement claims and counterclaim for revocation proceedings centred on bellisa's patent EP2223589 for a system of "edging for beds and grassland areas consisting of at least two strips of sheet metal that can be connected to each other" characterised by its tongue-and-groove attachment mechanism designed for straightforward on-site assembly. The UPC rejected Windhager's counterclaim for revocation, finding that the patent was both novel and inventive.
Direct and indirect patent infringement
On infringement, the court held that Windhager's product realised the same features as belissa's patented product when two or more sections were assembled as intended, thus constituting direct infringement.
This decision provides important clarification on the boundary between direct and indirect infringement under Article 25(a) UPCA. Article 25 of the UPCA encompasses the rights of a patent holder to "prevent the direct use of the invention". Within this, Article 25(a) provides that a patent holder can prevent the "making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or storing the product for those purposes". The question in this case centred around whether the individual sale of the components of a product for on-site assembly was enough to establish direct infringement sufficient to trigger this right.
The court held that supplying all components of a product designed for on-site assembly constitutes direct infringement, even when supplied unassembled. It stated that:
"It is irrelevant for the direct patent infringement that the lawn and design edging are obviously only offered in a non-assembled state and delivered to customers in Austria. It is true that claim 1 only covers edging composed of at least two lawn and design edges. However, as features 2.1 and 2.3.6 show, the design of the invention is designed precisely for the metal strips to be assembled in a simple manner at the place of their use without the addition of other objects... In any event, in such a case, the mere offering and distribution of all components of a patent-infringing product, which in a modular system only need to be assembled in a simple manner by the purchaser at the place of use without the addition of any additional items, constitutes a direct patent infringement within the meaning of Article 25 of the UPCA".
Moreover, the court highlighted that the injunction granted "includes the offering and placing on the market of a single lawn and design edging" component. It was concluded that, where a patent-infringing product consists of at least two identical, coordinated components, the selling of one component may also constitute direct infringement provided "reference is made to the possibility of assembling or if this is otherwise obvious", and no additional subject-matter is needed.
Comment
This decision indicates that, what might have been considered to fall under indirect infringement under Article 26(1) UPCA (which covers infringement via the supply of essential elements of an invention to provide the means to recreate that invention), could, in the right circumstances, be addressed by the court in terms of direct infringement. This is significant since the court can only find that there has been indirect infringement (often termed "secondary" infringement where direct infringement is termed "primary") where the alleged secondary (indirect) infringer has the requisite knowledge that the materials supplied will be used by the primary (direct) infringer to infringe the patent. This requirement often makes indirect infringement more difficult to prove for patentees. This decision will broaden the reach of a modular assembly patents at the UPC, in the Mannheim Local Division at least.
Article 25 UPCA
Right to prevent the direct use of the invention
A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or storing the product for those purposes;
(b) using a process which is the subject matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect;
(c) offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject matter of the patent.
Article 26 UPCA
Right to prevent the indirect use of the invention
(1) A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from supplying or offering to supply, within the territory of the Contracting Member States in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect.
(2) Paragraph 1 shall not apply when the means are staple commercial products, except where the third party induces the person supplied to perform any of the acts prohibited by Article 25.
(3) Persons performing the acts referred to in Article 27(a) to (e) shall not be considered to be parties entitled to exploit the invention within the meaning of paragraph 1.
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