A guide to the UPC and the UP - Flipbook - Page 46
This is confirmed in art.3(2) Unitary Patent Regulation, which repeats that:
“a European patent with unitary effect … may be licensed in respect of the whole or part
of the territories of the participating Member States”.
Does the Unitary Patent Regulation affect applicable law (and thus other conditions) in
licence agreements?
3-33
The question arises whether determining the law of a Unitary patent as an object of property
applies to licence agreements, such that licences are or should be governed by the national
law as determined according to art.7 Unitary Patent Regulation. Some commentators have
argued this to be so on the basis that a licence is relevant to a patent as an object of property.
In some jurisdictions, for example, a licence may be seen as having an effect on the object of
property (for instance, an exclusive licence in Germany has an in rem effect).
3-34
The first consequence of this view is that the parties are not free to decide which law
applies to a licence agreement since it must be governed by the rules in art.7 Unitary
Patent Regulation. 30 The second consequence is that, if the applicant has no residence
or place of business in one of the Participating Member States, German law will govern
the licence agreement.
3-35
There are however compelling reasons why such an interpretation is incorrect and why the
patentee and the licensee are free to make their own contractual arrangements as determined
by national laws rather than the Unitary Patent Regulation. As a consequence, there is no
substantial difference between a licence under a traditional European patent and one under
a Unitary patent.
3-36
The first argument against such an interpretation is that the wording of the heading of Ch.III
Unitary Patent Regulation indicates that it only relates to a patent as “property”, and that
therefore it only relates to ownership and other issues in rem. From a legal perspective,
a licence is a contractual arrangement relating to the use of the invention and so this would
not affect the patent as an object of property as such. The grant of a licence does not affect
the ownership of the property, in contrast to transfers, insolvency and security interests,
which can clearly affect ownership rights in the property.
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Comparisons may also be drawn with the transfer and licence provisions pertaining to EU
intellectual property rights such as the EU trade mark, the Community design right or the
Community plant variety right. Most notably the European Union Intellectual Property Office
Guidelines for EU trade mark licences confirms that art.16 EU Trade Mark Regulation 31 is
limited to the effects of a licence as an object of property and:
“does not extend to contract law. Art.16 Trade Mark Regulation does not govern the
applicable law or the validity, of a licensing contract, which means that the freedom of the
contracting parties to submit the licensing contract to a given national law is not affected
by the Trade Mark Regulation”. 32
30
31
32
See also the discussion in chapter 7 (Applicable Law) in relation to arts 5 and 7 Unitary Patent Regulation, paragraphs 7-17 to
7-25 and 7-27 to 7-32.
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).
Guidelines for Examination of European Union Trade Marks, European Union Intellectual Property Office (EUIPO), Part E
Register Operations, s.3 EUTMs as Objects of Property, Ch.3 Rights in rem s.1.1, p.5 available at:
https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_
practice/trade_marks_practice_manual/WP_1_2017/Part-E/03-part_e_register_operations_section_3_ctms_as_objects_of_
property/part_e_register_operations_section_3_chapter_3_rights_in_rem_en.pdf [Accessed 22 March 2023].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 36
