A guide to the UPC and the UP - Flipbook - Page 44
upon death or dissolution, or alternatively to executors or administrators or similar, will also
be governed by the relevant Participating Member State’s law of property.
3-23
As a practical matter, and certainly in circumstances in which a worldwide portfolio of patents
is being acquired (each patent potentially the subject of a different law of property), the parties
are likely to choose a governing law with which each party is familiar and comfortable for their
contractual relationship. Indeed, this reflects the current practice in M&A asset acquisitions
where the sale and purchase agreement and surrounding IP transfers are each stated to be
under one governing law. It is possible that such an assignment may not meet the strict legal
requirements stipulated by the relevant law of property of a particular patent within the
portfolio being assigned. However, the assignee would typically include further assurance
obligations on the part of the assignor to address this risk. Provided that the contract itself is
valid and enforceable as a matter of the chosen governing law, in the event that a particular
assignment was not legally effective or required further formalities to be complied with,
the assignor would be obliged (as a matter of contract law) to complete any further steps
in order to assign the Unitary patent properly.
3-24
Since a Unitary patent will only have unitary effect after grant, 20 an assignment or the taking
of a security interest over the European patent application is not affected by the Unitary Patent
Regulation and will be subject to the normal rules of the EPC. 21 If the ownership of a European
patent application in one or more Participating Member States has been transferred during
prosecution, this is not a bar to unitary effect being granted although it would appear to be
contrary to the unitary nature of a Unitary patent and the requirement that it can only be
transferred in respect of all the Participating Member States. 22 Explanatory note 6 to r.5 of the
Unitary Patent Regulation states that unitary effect can also be requested where a European
patent was granted to multiple proprietors in respect of different Participating Member States
as long as the patent has the same set of claims in respect of all the Participating Member
States. The note also states that, procedurally, a common representative will have to be
appointed to file the request for unitary effect. 23 The legal effect will, although it is not stated,
most likely be that the Unitary patent is held jointly by the multiple proprietors who must
then agree should they wish to limit, transfer or allow the Unitary patent to lapse under
art.3(2) Unitary Patent Regulation. This will require cooperation between what may have
been previously unconnected companies; they will effectively become co-owners of the
Unitary patent.
Security Interests
3-25
Security interests generally affect the Unitary patent as an object of property. They limit the
full and unlimited property and control of the Unitary patent and generally speaking, they
are considered a right in rem.
3-26
Art.2(e) Unitary Patent Regulation states that the register for Unitary patent protection 24 is a
register where limitations of a European patent with unitary effect are registered and art.9(1)(h)
Unitary Patent Regulation states that Participating Member States shall ensure that the EPO is
informed of such limitations. However, other than these references, the Unitary Patent
Regulation is silent on security interests. 25
20
21
22
23
24
25
art.4(1) Unitary Patent Regulation.
See paragraph 3-31.
art.3(2) Unitary Patent Regulation.
r.151 EPC.
See paragraphs 3-72 to 3-74.
Confirmed in explanatory note 5 to r.16 Unitary Patent Rules.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 34
