Certain mechanisms of the UPC and the UP may need to be anticipated in patent-related agreements to get the most out of the new system. We will focus here on the contractual provisions that can be useful in relation with obtaining a Unitary Patent (1), registering and withdrawing an opt-out (2) and the licensee’s right to bring action (3).
1. Obtaining a European patent with unitary effect (“Unitary Patent”)
EU Regulation No 1257/2012 provides that the unitary effect may be requested for any European patent application issued for all participating Member States. Instead of obtaining a “classic” European patent, which corresponds to a bundle of national patents, the proprietor will obtain a Unitary Patent which will have the same effect in all the participating EU Member States.
| In case of co-ownership of EP patent application, the co-owners may have different views as to the relevance of the unitary effect. It would then be recommended to have a clear contractual decision-making in place between co-owners. |
When it comes to license agreements, the licensee will be in a very different situation if the patent application that he exploits becomes, after grant, a Unitary Patent or a “classic” European patent (EP). For example, when the licensee operates throughout Europe, it may prefer to have a Unitary Patent to have protection in most European countries for a limited cost.
| It may then be relevant to include a contractual mechanism in the license in order to obtain the licensee’s position as to the unitary effect of the licensed patent. |
2. Opt-out and withdrawal for “classic” European patents
The UPC Agreement provides for a transitional period of 7 years (renewable) during which the actions relating to the “classic” European patents « may still be brought before national courts or other competent national authorities » (Art. 83(1) UPCA).
Those wishing to avoid the uncertainties associated with this transitional period “shall have the possibility to opt out of the exclusive jurisdiction of the Court” (Art. 83(3) UPCA).
The decision to “opt-out” will have deep consequences for the patentee as well as for the licensee.
| In this context, it would certainly be good to include the appropriate decision-making process in patent-related agreements, in particular to frame the potential discussions between (i) co-owners and (ii) licensor and licensee. |
3. The licensee’s right to bring action
According to Article 47 (2) UPCA, “Unless the licensing agreement provides otherwise, the holder of an exclusive license 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”.
It may then be easier for a licensee to bring an action before UPC than before national courts, national laws being possibly more demanding in this respect.
An action brought by a licensee may have irreversible consequences particularly regarding the possibility of using the opt-out of Article 83 UPCA. Indeed, the actions initiated by a licensee will “freeze” the situation and paralyze the possibility of taking advantage of the opt-out and withdrawal mechanisms:
- If the licensee initiates an action before the UPC, it is then too late to protect the patent from a global revocation action by using the opt-out; and
- If the licensee of a European patent that has already been opted out of the exclusive jurisdiction of the UPCA initiates an action before a national court, this would put the patent outside of the UPC system, even though this system has significant advantages which the parties could have benefited from.
| Proprietors should then carry out an audit of the relevant provisions of the license agreements before entry into force of the UPC to avoid uncontrolled initiatives by licensees. |
