A guide to the UPC and the UP - Flipbook - Page 39
Introduction
3-01
In this chapter we discuss the issues surrounding transactions involving Unitary patents.
This includes the provisions contained in the Unitary Patent Regulation and the UPCA that
address the transfer and licensing of a Unitary patent, but also touches on other dealings
in relation to Unitary patents as an item of intangible property, such as those involving the
granting of security interests, insolvency situations and entitlement issues. Such dealings can
be made in relation to a Unitary patent and are possible as a result of the recognition of the
Unitary patent as an item of property, as set out in the Unitary Patent Regulation. Art.7 Unitary
Patent Regulation provides a hierarchy of checkpoints that are to be used to determine the
national law under which the Unitary patent is recognised as an item of property. The way
in which this checklist is set out could have an impact on which national law becomes relevant
for certain issues concerning a Unitary patent.
The Unitary Patent as a Property Right
Determining the Law Governing a Unitary Patent
3-02
Art.7 Unitary Patent Regulation provides a set of rules on how to determine the national law
that governs the Unitary patent as an object of property. According to this provision, a Unitary
patent is a single object of property and for that purpose is treated as a national patent of a
particular Participating Member State. 1 The identity of that particular Participating Member
State is determined by walking through the steps set out in art.7 Unitary Patent Regulation.
Depending on the circumstances, these steps have the ability to produce what may appear
at first to be a surprising result.
Single Applicant
3-03
Where there is a single applicant, a Unitary patent (as an object of property) will be treated in
its entirety in all Participating Member States as a national patent:
– Of the Participating Member State where the patent has unitary effect and where the
applicant resides or has its principal place of business on the date of filing the application; 2
and if this is not applicable
– Of the Participating Member State where the patent has unitary effect and the applicant has
a place of business on the date of filing the application. 3
3-04
1
2
3
4
5
There is a fall-back position in the event that there is no Participating Member State in which
the patent has unitary effect and where the applicant has a place of business – in that event
the Unitary patent is treated (as an object of property) as a national patent of the state where
the EPO has its headquarters 4 i.e. Germany. 5 A brief summary of German property law is set
out in the Annex to this chapter. The sequence of steps used to determine the applicable law
set out in arts 7(1) and (3) Unitary Patent Regulation is illustrated in the flow chart in figure 3-1.
Note that the Unitary Patent Regulation and the Translation Regulation refer to participating Member States which are
defined as those Member States participating in enhanced cooperation in the area of unitary patent protection (art.2(a)
Unitary Patent Regulation). Since a Unitary patent has effect in those participating Member States in which the Court has
exclusive jurisdiction (art.18(2) Unitary Patent Regulation), “Participating Member States” has the same definition as
“Contracting Member States”. The former is used in this chapter because of its use in the Unitary Patent and Translation
Regulations.
art.7(1)(a) Unitary Patent Regulation.
art.7(1)(b) Unitary Patent Regulation.
art.7(3) Unitary Patent Regulation.
art.6(1) EPC states that the headquarters of the EPO is in Munich, Germany.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 29
