A guide to the UPC and the UP - Flipbook - Page 47
The same view that the applicable law for licence agreements of EU trade marks does not affect
the parties’ contractual freedom is held by Cohen Jehoram, 33 Gielen and Von Bomhard. 34
Hasselblatt also seems to be of the opinion that the rules governing Community design right,
as an object of property, do not extend to contract law. 35
3-38
It is unlikely that the European Parliament and Council intended to extend the applicable law
rules of art.7 Unitary Patent Regulation to licence agreements. Otherwise, parties to
international licensing agreements would be unable to choose the law applicable to their
licence. This would be particularly objectionable in a situation, for instance, involving a non-EU
applicant and would bring into question whether determining the applicable law for the licence
agreement according to art.7 Unitary Patent Regulation would be “in accordance with the spirit
and purpose of the provision in article 7 Unitary Patent Regulation”. 36
3-39
On the basis that art.7 Unitary Patent Regulation is not relevant to the determination of the
applicable law for licence agreements, the Unitary Patent Regulation and other legislation
surrounding the Unitary patent allows the patentee and the licensee freedom of choice. In the
absence of an express or implied choice of law by the parties, national law as well as applicable
EU law such as Rome I and/or private international law will determine which law is applicable to
the licence agreement. In that case, the agreement will normally be governed by the law of the
country with the closest connection to the subject matter of the contract. In addition, Rome I
itself sets out in detail the specific situations where there is no or only limited freedom of
choice of law, and notably does not contain any such limitations in relation to patent licences.
3-40
In practice, therefore, and indeed whether or not art. 7 Unitary Patent Regulation applies to
licence agreements, it will always be advisable to include a choice of law clause in all licence
agreements relating to a Unitary patent, as with those relating to traditional European patents.
3-41
Parties to licences also enjoy significant freedom (subject of course to national and EU
competition laws) in terms of the more substantive provisions, such as the extent of exclusivity,
territorial scope, 37 marketing/sales channels, right to sub-licence, ability to assign, royaltysetting choice, termination, sell-off period and reporting. One of the most important of these is
the exclusivity arrangement which may have a major impact on the right to enforce a Unitary
patent and thus deserves particular attention. 38
3-42
If a Unitary patent is co-owned, the question arises as to who is entitled to grant licences.
This will be determined by the law of the Unitary patent as a property right. This is an important
consideration because patent law differs in the various countries on the question of whether a
co-owner is entitled to license a patent on their own or whether the co-owner needs the
permission of the other co-owner(s). In general, it seems that in most Participating Member
States the permission of the other co-owner(s) is required in the absence of a contractual
arrangement. 39 From that perspective, it is advised that co-owners contractually arrange
cooperation on this issue.
33
34
35
36
37
38
39
Cohen Jehoram T, “European Trademark Law”, (Alphen aan den Rijn: Kluwer Law International, 2010), p.535.
Gielen C and von Bomhard V, “Concise European Trademark and Design Law”, (Alphen aan den Rijn: Kluwer Law international,
2011), p.91.
Hasselblatt GN, “Community Design Regulation, A commentary”, (Munich, Germany; C.H. Beck, 2015) p.242.
Müller-Stoy T Paschold F, “European patent with unitary effect as a property right”, Journal of Intellectual Property Law &
Practice, 2014, Vol. 9, No. 10, p.859.
See also art.3(2) para.3 Unitary Patent Regulation.
See paragraphs 3-61 to 3-67.
See the summary report of the International Association for the Protection of Intellectual Property (AIPPI) in response to
Question Q194 on the impact of co-ownership of intellectual property rights on the exploitation available at
https://www.aippi.fr/upload/Singapour%202007%20Q193%20194%20195/sr194english.pdf [Accessed 22 March 2023].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 37
