A guide to the UPC and the UP - Flipbook - Page 42
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Example two – a US company with an office in a European country or offices in many European
countries applies for a Unitary patent. The US company does not have its residence or principal
place of business in a Participating Member State, so art.7(1)(b) Unitary Patent Regulation will
be used to determine the Unitary patent’s status as an object of property, i.e. of which
Participating Member State the Unitary patent shall be treated as a national patent. Under
art.7(1)(b) Unitary Patent Regulation, if the US company has only one office in a Participating
Member State then that State will be the relevant Participating Member State. If the US
company has offices in more than one Participating Member State then it is uncertain how
to determine which of them is the relevant Participating Member State. For administrative
purposes, it would probably be advisable for the company to elect one such Participating
Member State for all of its Unitary patents.
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Example three – a Japanese company with no place of business in Europe applies for a Unitary
patent. As the Japanese company has no place of business in the Unitary patent area, art.7(3)
Unitary Patent Regulation will take effect and the Unitary patent will be treated as a German
national patent.
Joint Applicants
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Art.7(2) Unitary Patent Regulation sets out how to determine the treatment of a Unitary patent
as a national patent in the situation where there are joint or multiple applicants. The criteria
set out in art.7(1)(a) Unitary Patent Regulation will be applied to the first named joint applicant.
Only where this is not possible, because the first named joint applicant does not reside or
have its principal place of business in the Unitary patent area, will the art.7(1)(a) Unitary Patent
Regulation criteria then be applied to the next named joint applicant, in the order in which they
are identified on the application, and so on. Where none of the joint applicants fulfil the
art.7(1)(a) Unitary Patent Regulation criteria, the art.7(1)(b) Unitary Patent Regulation criteria
will be applied to the first named joint applicant, and if not, to the next named joint applicant.
Art.7(3) Unitary Patent Regulation still applies as a fall-back if none of the criteria apply to any
of the applicants. This cascade is illustrated in figure 3-2.
Figure 3-2: Unitary Patent as an Object of Property: Multiple Owners
Applicant 1 residence or
principal place of business
Applicant 1 place of business
If none in a PMS*
If none in a PMS*
Applicant 2 residence or
principal place of business
Applicant 2 place of business
If none in a PMS*
If none in a PMS*
Applicant 3 etc.
Applicant 3 etc.
If applicant 1 does not have its residence
or principal place of business in a PMS*
If no applicant has a place
of business in a PMS*
Germany
*PMS = Participating Member State
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 32
