A guide to the UPC and the UP - Flipbook - Page 45
3-27
This is unsurprising when one accepts that a security affects the Unitary patent as an
object of property and that this will be treated as a national patent to which the national
law of a Participating Member State applies, as determined in accordance with art.7 Unitary
Patent Regulation. 26
3-28
There are very different types of security interest in the Unitary patent area, such as
pledges, mortgages, charges and usufructs. Arguably, a seizure of a patent (application) as
an asset may also be considered as a right that affects the patent as an object of property.
Furthermore, a broad variety of formalities are set by national laws regarding how to establish
a security in the Participating Member States.
3-29
In 2006, the International Association for the Protection of Intellectual Property (AIPPI)
Question 190 was dedicated to contracts regarding Intellectual Property Rights (assignments
and licensing) and third parties. It also had a sub-question 6: “Can IP rights be used to provide
security? If so what formalities are required?” Contributions received from Participating
Member States included Finland, Sweden, Estonia, Denmark, Germany, the Netherlands,
Belgium, [UK,] France, Italy, Portugal, Greece, Slovenia, Hungary, Romania and Bulgaria.
The conclusion was that:
“Groups which answered this question described a wide variety of security interests, including
pledges, mortgages, deposits and usufructs. It will be critical for anyone taking security to take
specific advice on the formalities required and of national variations in rights.” 27
3-30
The country specific reports describe a very wide variety of possible security interests and
requirements to establish such rights. There may be unwanted consequences resulting in
ineffective security, as a result of the application of some national laws governing the
establishment of a security interest. In such cases an applicant for a Unitary patent may
sometimes want to consider strategically establishing a place of business in a more
favourable country within the Unitary patent territory.
Traditional European Patents and Applications
3-31
After grant, a European patent is treated as a bundle of national patents, and assignments and
security interests are dealt with by national laws. Before grant, a European patent application,
as an object of property is, in each designated EPC Contracting State and with effect for such
State, subject to the law applicable to national patents in that State. 28 Such an application may
be transferred or give rise to rights in one or more designated EPC Contracting States, but if
assigned, the assignment must be signed by all the parties to the contract. 29
Licences
Licensing Unitary Patents
3-32
It is important to note that, whereas transfer of a Unitary patent can only occur for the whole
territory of all Participating Member States, licences may be granted for the whole or a part
of this territory. Recital 7 Unitary Patent Regulation provides:
“It should be possible for a European patent with unitary effect to be licensed in respect
of the whole or part of the territories of the participating Member States”.
26
27
28
29
See paragraphs 3-02 to 3-17.
https://www.aippi.fr/upload/Gothenburg%202006%20Q189%20190%20191%20192/sr190english.pdf
[Accessed 22 March 2023].
art.74 EPC.
arts 71 and 73 EPC. Further formalities are contained in r.22 EPC Implementing Regulation.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 35
