A guide to the UPC and the UP - Flipbook - Page 41
Regulation, the definitions above do not appear to be unreasonable in the context of applying
for Unitary patents.
3-09
As to the expression “place of business”, there is no doubt that it is a vague and uncertain
term. All that can be stated with any confidence is that the combination of the terms
“residence”, “principal place of business” and “place of business” are intended to have a very
wide meaning. In this regard it is worth noting that recital 4 Unitary Patent Regulation uses yet
another expression; it states that a Unitary patent should be available to proprietors regardless
of their nationality, residence or “place of establishment”. The term “establishment” could
therefore be considered to cover both the expressions “principal place of business” and “place
of business”. In Hummel Holding A/S v Nike Inc., 11 the CJEU held that “establishment” should be
given a broad interpretation stating that there must be visible signs enabling the existence of an
establishment to be easily recognized i.e. it must have a real and stable presence, from which
commercial activity is pursued, as manifested by the presence of personnel and material
equipment; it must have an appearance of permanency to the outside world such as the
extension of a parent body; but it is irrelevant whether it has legal personality or not. 12
3-10
The Unitary Patent Rules provide that, within one month of the mention of grant of a European
patent, the patentee must file a request that the patent should have unitary effect and that
request must contain, inter alia, the name, address and nationality of the applicant and the EPC
Contracting State in which the applicant’s residence or principal place of business is located. 13
It is assumed that it was an oversight that led to the lack of reference to the applicant’s “place
of business” in this list. However, the EPO have arranged that such a note can be placed on the
EPO register. 14 Once the relevant note has been made on the EPO register, art.7(1) Unitary
Patent Regulation appears to treat it as definitive.
3-11
If the patentee does not record any place of residence or business on the EPO register, the
default position would appear to be that the Unitary patent is treated as a German national
patent under art.7(3) Unitary Patent Regulation. This is preferable to allowing the patentee
to leave the register blank and decide the matter at a later date (possibly from a number
options because it has multiple places of business in the EU), as to do so would contradict
the requirement for legal certainty which both the patentee and others, such as licensees,
require when dealing with the patent as an object of property.
Examples
3-12
The following paragraphs set out three illustrative examples to demonstrate how the rules
on determining the relevant Participating Member State under art.7 Unitary Patent Regulation
are applied. The rules allow for patentees to establish corporate subsidiaries (or similar) in a
particular territory of a Participating Member State for the purpose of availing themselves of
that national law of property. Whether or not this is worthwhile or attractive may depend on the
perceived benefits or disadvantages of the national property laws in question including their tax
and transfer pricing regimes.
3-13
Example one – a Swedish company applies for a Unitary patent. As the applicant has its
principal place of business in Sweden, under art.7(1)(a) Unitary Patent Regulation the Unitary
patent will be regarded as being an object of property of Sweden, and for that purpose, treated
as a Swedish national patent.
11
12
13
14
Ibid.
ibid at [37] and [38].
r.6(2)(a) Unitary Patent Rules referring to r.41(2)(c) EPC Implementing Regulations. Despite the uncertainty of the meaning
of “residence” and “principal place of business”, it has not caused undue problems to date in relation to the EPC. There is
no mention of a requirement to include the patentee’s “place of business” in the request for unitary effect. See r.6 Unitary
Patent Rules.
r.16(1)(w) of the Unitary Patent Rules.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 31
