A guide to the UPC and the UP - Flipbook - Page 43
3-17
Joint applicants should therefore consider the order in which their names appear on the
application for a European patent, since this will determine the Participating Member State
whose law governs the Unitary patent as an object of property and so determine the legal
effects of co-ownership in the relevant jurisdiction. Ideally, joint applicants should agree on
a common representative and have an agreement governing for example whether a request
for a Unitary patent is to be made at all.
Effect of the Property Right
3-18
The question that follows the determination of the Participating Member State of which a
Unitary patent is to be treated as a national patent is: what effect does that have on the Unitary
patent? The issues that are dependent upon national law are those issues that are affected by
the law of property per se, such as co-ownership, assignment, security, tax and insolvency,
but not those relating to contractual rights, such as licences. 15
3-19
This chapter does not summarise the relevant property laws of each Participating Member
State. However, because a considerable number of Unitary patents as objects of property are
likely to be subject to German property law, as the fall-back position in art.7(3) Unitary Patent
Regulation, a brief summary of German property law is set out in the Annex to this chapter.
Assignment of a Unitary Patent
3-20
Art.3(2) Unitary Patent Regulation states that a Unitary patent can only be transferred in
respect of all the Participating Member States. This reflects the intention of recital 14 which
states that “as an object of property” a Unitary patent should be dealt with in its entirety, and
in accordance with the law of property of the relevant Participating Member State. 16 It is clear
therefore that a Unitary patent cannot be partially assigned in relation to only certain of the
Participating Member States. Indeed, the ability to assign patent rights in some but not all
territories in relation to the same invention could be a factor in deciding whether to apply
for unitary effect or not.
3-21
The Unitary Patent Regulation does not set out any legal requirements for a valid assignment
of a Unitary patent. This contrasts with the position as regards the EU trade mark. Whilst the EU
Trade Mark Regulation has a similar mechanism for determining which Member State’s law of
property applies to the EU trade mark, 17 the Regulation states that an assignment of a EU trade
mark must be in writing and requires the signatures of the parties to the contract, otherwise
it is void. This provision is intended to take precedence over the particular Member State’s law
in relation to the valid assignment of trade marks as objects of property. Similarly, as regards
European patent applications, the EPC 18 provides that a valid assignment must be in writing
and signed by the parties to the contract in order to be valid. Of course, once a European patent
is granted and becomes an object of property of a designated Member State, it is then subject
to that Member State’s rules and requirements in relation to assignment. 19
3-22
In the absence of any express requirements in relation to assignments in the Unitary Patent
Regulation, it seems that the question of what constitutes a valid assignment of a Unitary
patent is a matter for the laws of the Participating Member State governing the patent as an
object of property. Furthermore, issues such as assignment via operation of law and devolution
(on dissolution of a company patentee) or death (of an individual patentee), are matters which
will be governed under the relevant Participating Member State’s law of property.
Similarly, whether a co-owner’s interest in a Unitary patent will pass to the other co-owner(s)
15
16
17
18
19
See paragraphs 3-33 to 3-42.
As determined in accordance with art.7 Unitary Patent Regulation, see paragraphs 3-02 to 3-17.
art.17(3) Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council
Regulation (EC) No 207/2009 on the Community trade mark (OJ No. L 341, 24.12.2015, p.21).
art.72 EPC.
art.2(2) EPC.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 33
