A guide to the UPC and the UP - Flipbook - Page 181
Procedural Rules Relating to Parties
Who Can Start Proceedings?
11-45 The definition of who has the legal capacity to commence proceedings is very broad.
Any natural or legal person, or any body equivalent to a legal person entitled to initiate
proceedings in accordance with its national law, has the capacity to be a party to
proceedings before the Court. 88
Infringement and Infringement-related Actions
11-46 A patent proprietor is entitled to bring actions before the Court. 89 Its licensees are also entitled
to do so, as follows, but the patent proprietor is entitled to join any such action:
– An exclusive licensee is entitled to bring an action before the Court provided that the patent
proprietor is given notice and the licensing agreement does not provide otherwise;
– A non-exclusive licensee is entitled to bring an action before the Court provided that it is
expressly permitted to do so by the licensing agreement and then it must still give prior
notice to the patent proprietor. 90
11-47 A patentee of a Unitary patent who is a would-be claimant must ensure that its name is on the
register kept by the EPO for Unitary patent protection before commencing proceedings, since
the person shown in the register is treated as the patent proprietor. 91 In relation to European
patents, the same strict rules does not apply; there is merely a rebuttable presumption that the
person shown in the national patent register is entitled to be registered as the proprietor. 92
The proprietor is in fact the person entitled to be registered as such under the law of each
Contracting Member State in which the European patent has been validated, whether or not
such person is recorded in the register of patents maintained in such Contracting Member
State. Therefore, provided that it can show that it is entitled to be so registered under the laws
of the relevant Contracting Member States, a proprietor of a European patent and would-be
claimant can commence proceedings for infringement of a European patent before the Court
irrespective of what is shown in the national patent registers.
Co-owners
11-48 The issue of co-ownership or joint ownership of a Unitary or European patent is not addressed
in the UPCA and is a matter of national law. In relation to a Unitary patent, the relevant national
law that governs the patent as an object of property will govern the issues of co-ownership. 93 In
relation to European patents, the law is that of the Contracting Member State in which
it is granted.
11-49 The effect of co-ownership is that each of the proprietors owns a share of the patent.
Although the law in relation to co-ownership is not harmonised across the EU, generally
speaking, one co-owner may enforce the patent without the other co-owners’ consent.
88
89
90
91
92
93
art.46 UPCA.
art.47(1) RoP.
arts 47(2) and (3) UPCA.
r.8(4) RoP and r.15 Unitary Patent Rules.
r.8(5)(a) and (c) RoP.
art.7 Unitary Patent Regulation. See chapter 3 (Transactions with Unitary Patents and European Patents Subject of the Court)
paragraphs 3-02 to 3-17.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 171
