As from 1 June 2023, the date on which the Agreement on a Unified Patent Court (the “UPC Agreement”) will enter into force, the scope of the “research exemption” under Belgian law will become more limited. Art. XI.34, §1, b) of the Belgian Code of Economic Law (“BCEL”) will no longer exempt “acts done for scientific purposes with the subject-matter of a patented invention” but only “acts done for experimental purposes relating to the subject-matter of the patented inven- tion”, similar to Art. 27, (b) of the UPC Agreement.
Since 2005, Belgian patent law had been known for the particularly broad scope of its exception to the exclusive patent rights in case of “acts done for experimental purposes” (the so-called “research exemption”).
Right holders could not prevent third parties from performing acts in Belgium for scientific purposes (or mixed scientific and commercial purposes) relating to the subject matter of a patented invention (in order to assess its inventiveness, to further develop the solution, etc.). In addition, acts for scientific (or mixed) purposes with the subject-matter of the patented invention were also allowed. In other words, the latter exception allowed (and is still allowing to date) third parties to freely use a patented invention as a tool in the framework of a scientific research (e.g., “a patented scale used for weighing the micron differences of the different raw materials used to manufacture the active ingredient for a vaccine” ).(1)
In 2017, the Belgian legislator however decided to no longer maintain such a broad research exemption in order to align the scope of protection granted by the following patents:
a Belgian patent or the Belgian part of a European patent that has been subject to an “opt-out” from the Unified Patent Court exclusive competence (Art. 83, §3 of the UPC Agreement);
the soon to be European patents with unitary effect;
European patents which have not been subject to an opt-out from the Unified Patent Court exclusive competence.
Indeed, in order to increase legal certainty, situations are to be avoided where the ex- empted uses in Belgium of a patented invention would merely depend on a decision of the patent holder to “opt-out”, over which the third party-users have no control and which might moreover vary over time (in case of later decision to “opt-in”) (2) .
As a result, Art. 4 of the Act of 19 December 2017 amending various patent provisions in relation to the implementation of the unitary patent and the unified patent court replaced the former Art. XI.34, §1, b) of the BCEL with the following provision: “The rights conferred by a patent shall not extend to any of the following: [...] b) acts done for ex- perimental purposes relating to the subject-matter of the patented invention”.
The entry into force of this “reduced version” of the former research exemption under Art. XI.34, §1, b) of the BCEL was subject to the entry into force of the UPC Agreement itself (3).
With Germany’s recent ratification of the UPC Agreement on 17 February 2023, it is now established that the UPC Agreement will enter into force on 1 June 2023. On that day, among all other changes, Art. XI.34, §1, b) of the BCEL will enter into force and acts carried out in Belgium for scientific purposes with the subject matter of a patented invention will require a prior authorization from the patent holder, no matter which type of patent applies to such invention (Belgian patent, European patent, European patent with unitary effect).
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(1) Draft Act amending the Act of 28 March 1984 on patents, with regard to the patentability of biotechnological inventions, Doc. Parl., Ch., 2004-2005, 51K1348/006, p. 59.
(2) Draft Act amending various patent provisions in relation to the implementation of the unitary patent and the unified pat- ent court, Doc. Parl., Ch., 2017-2018, 54K2755/001, pp. 8 and 15
(3) Art. 13, sub. 2 of the Act of 19 December 2017 amending various patent provisions in relation to the implementation of the unitary patent and the unified patent court.