A guide to the UPC and the UP - Flipbook - Page 183
Actions for Revocation
11-55 A revocation action must be directed against the patent proprietor. 101 As explained in
paragraph 11-47, for Unitary patents, this will be the person shown in the register for Unitary
patent protection kept by the EPO. Therefore, in relation to a Unitary patent, the statement for
revocation must be served on the registered proprietor 102 or the Registry will reject it when
examining the formalities. 103 In relation to an action for revocation of a European patent, the
person shown in the national patent register for each Contracting Member State as the
proprietor is treated as such for both revocation actions and actions for DNIs. If no such person
is registered in a national patent register, the last person recorded in the European patent
register kept by the EPO is to be regarded as the proprietor. 104
11-56 If the action for revocation has been served on a registered proprietor but that person is not
entitled to be the registered proprietor 105 (for example if a patent has been transferred but the
transfer has not yet been registered) the (former) proprietor shall as soon as practicable after
service of the statement for revocation apply to the Court to be substituted by the person
entitled to be the registered proprietor. 106 Accordingly, the claimant is relieved from the duty
of finding out whether the person recorded in the register is in fact entitled to be the registered
proprietor of the European patent. However, this could still lead to a number of practical
difficulties. It is quite common, for one reason or another, for patent proprietors not to register
changes in title. If title has passed from a company which is afterwards dissolved, but whose
name remains on the register, there would be no legal entity on whom to serve the decision for
revocation and no one to apply to the Court to substitute the actual owner of the patent.
Restoring a company for this purpose would hardly be sensible. Similarly, the patent may have
passed through a number of hands following an assignment from the person registered so the
registered proprietor may have no knowledge of who owns the patent, in which case, the
registered proprietor may simply apply to be removed from both the register and the action as
it would have no interest in the action.
11-57 It remains to be seen in practice whether any burden will devolve upon the claimant to review
the ownership of the patent and, if the register is not correct and the current owner can be
found or is otherwise known to the claimant, include information on the present owner of the
patent in the statement for revocation. In relation to a European patent, since the presumption
that the person registered as the proprietor is the proprietor is rebuttable, the claimant would
be able to direct the statement of revocation to the current owner of the patent.
Multiple Parties or Patents – the Court’s Powers
11-58 Although proceedings may be commenced by more than one claimant or in respect of more
than one patent, the Court may order that these be heard in separate proceedings. 107
Proceedings may also be started against more than one defendant if the Court has competence
in respect of all of them. 108 Again, the Court may order separate proceedings against the
101
102
103
104
105
106
107
108
r.42(1) RoP. The validity of a patent cannot be contested in an action for infringement brought by the holder of a licence
where the patent proprietor does not take part in the proceedings. Therefore the defendant to an infringement action
brought by a licensee must bring any counterclaim for revocation of the patent against the patentee (art.47(5) UPCA).
r.8(4) RoP.
r.47 RoP.
r.8(6) RoP.
r.8(5)(a) RoP provides that in relation to the proprietor of a European patent, the person entitled to be registered as the
proprietor under the law of each Contracting Member State in which such European patent has been validated shall be
treated as the proprietor, whether or not such person is recorded as such.
r.42(2) RoP.
r.302(1) RoP.
r.303(1) RoP. Note that an action may only be brought against multiple defendants where there is a commercial relationship
between them and where the action relates to the same infringement (art.33(1)(b) UPCA).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 173
