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In this instalment of our series on the Unitary Patent system we look at the Unitary Patent as an object of property in relation to transactions such as assignments and licenses. We also look at what steps licensors and licensees may need to consider ahead of the commencement of the Unitary Patent system.
Governing Law
A key issue to consider is that a Unitary Patent as an object of property is governed by the law of the member state in which the applicant is resident or has their principal place of business. If this does not apply (e.g. a US applicant) the laws of Germany are applicable. Any subsequent assignment of the Unitary Patent will not change the applicable law. The laws of the member states vary and can have an impact on the ability of the rights of co-applicants to assign, bring proceedings, grant licenses as well as other issues. It is therefore important that such issues are considered in advance, in particular in relation to the issue of opting out of the Unified Patent Court system.
Assigning a Unitary Patent
While a conventional European Patent can be assigned in one or more member state, a Unitary Patent can only be assigned in respect of all participating member states. As detailed in our article “What is a Unitary Patent” this will include 17 countries at the outset, with a further six countries likely to join in the medium term. The transfer can be recorded in the Register for Unitary Patent Protection, details of which can be found in our article “Register for Unitary Patent Protection”. The recordal is undertaken through the European Patent Office, and requires the payment of a fee and submission of suitable supporting documents, such as an assignment or any written evidence which is sufficient to prove the transfer. The supporting documents must be in one of the three languages of the EPO (English, French or German) or a translation into one of the languages must be provided. Electronic copies of the supporting documents are acceptable, and in addition execution of the supporting documents may be by qualified electronic signature.
Licensing
Unlike a transfer, a license under a Unitary Patent can be for the whole or part of the territory. The license can be recorded in the Register for Unitary Patent Protection and in the same manner as detailed above in relation to assignments.
A license of right may also be recorded on the Register as being available under a Unitary Patent. The statement of availability can be entered on the Register without payment of a fee. Furthermore, renewal fees for a Unitary Patent on which such a statement have been recorded are reduced by 15%. While the statement can be withdrawn at any time the balance of the renewal fees is then payable to the EPO.
It is not possible to record an exclusive license on the Register at the same time as having a license of right statement recorded. Such a statement must therefore be withdrawn before an exclusive licence can be recorded.
Other titles or interests in a Unitary Patent, for example a security interest or mortgage, may also be recorded in the Register in the same manner.
The entering into force of the Unified Patent Court (UPC) raises a number of important considerations relating to licensing, both with respect to licenses granted under a Unified Patent and also existing licenses under a conventional European Patent. As noted in our “UPC Opt-Out” article, infringement and validity proceedings relating to a conventional European Patent which is already granted when the UPC comes into existence may be brought before the national courts or may be brought before the UPC. This will depend on whether the European Patent in question has been opted out of the UPC. If for example a third party were to initiate proceedings relating to a conventional European Patent before the UPC and no opt-out has been recorded, it is no longer possible to bring subsequent proceedings before any of the national courts. As a result the ability of the patent owner and any exclusive licensee to independently bring infringement proceedings before a national court may be removed if an opt-out is not secured in advance of any proceedings before the UPC.
From the perspective of the patent owner as licensor, it is important to understand that an exclusive licensee has the right, in the absence of any agreement to the contrary, to independently bring infringement proceedings before the UPC, which applies to both conventional European Patents and Unitary Patents. Thus there exists the possibility, should an exclusive licensee initiate proceedings before the UPC, that the patent owner will lose the ability to bring future proceedings before the national courts.
In particular, Article 47(2) of the Unified Patent Court Agreement notes:
(1) The patent proprietor shall be entitled to bring actions before the Court.
(2) Unless the licensing agreement provides otherwise, the holder of an exclusive licence in respect of a patent shall be entitled to bring actions before the Court under the same circumstances as the patent proprietor, provided that the patent proprietor is given prior notice.
(3) The holder of a non-exclusive licence shall not be entitled to bring actions before the Court,
unless the patent proprietor is given prior notice and in so far as expressly permitted by the
licence agreement.
These are important issues for both patent owners (licensors) and for licensees of European Patents and in respect of new licenses to be entered into under a Unitary Patent.
What you need to do…
As a patent owner or exclusive licensee, undertake an audit of all licences and consider opting out the patent(s) in question.
As a patent owner consider the terms of any license agreement. Is the license exclusive or not? A licensor should consider whether to restrict the right of an exclusive licensee to independently take proceedings before the UPC or the national courts.
If a party to any other patent agreement review the details and if necessary seek to amend as appropriate to safeguard your interests, for example agreements relating to co-ownership.
This article continues FRKelly's series on the upcoming Unitary Patent and Unified Patent Court. For more details, check out the following articles:
2. What is the Unified Patent Court?
3. How to Apply for a Unitary Patent
5. Register for Unitary Patent Protection
7. What Rights Are Afforded by a Unitary Patent?
8. UPC Opt-Out
9. Opposition, Appeals and Validity of Unitary Patents
10. Will the Unified Patent Court Affect SPCs?
13. Ireland and the Unified Patent Court
14. No More Fooling Around: April 1st is UPC Launch Date
15. Unified Patent Court Costs
16. Validity Actions at the UPC
17. Assignments and Licenses Under the Unitary Patent System
18. The UK and the Unified Patent Court
19. Delay to Start of UPC Sunrise Period
