A guide to the UPC and the UP - Flipbook - Page 48
Licences of Right over Unitary Patents
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The Unitary Patent Regulation contains few details on licensing. There is, however, one specific
licensing topic dealt with in the Unitary Patent Regulation in more detail, namely the so-called
licence of right (LOR). 40 According to art.8(1) Unitary Patent Regulation, the proprietor of a
Unitary patent may file a statement with the EPO to the effect that it is prepared to allow any
person to use the invention as a licensee in return for appropriate consideration. Art.8(2)
Unitary Patent Regulation provides that a licence obtained under this Regulation shall be
treated as a contractual licence. Since only a LOR is obtainable “under this Regulation”
it seems that art.8(2) Unitary Patent Regulation is limited to this specific licence.
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Art.9(1)(c) Unitary Patent Regulation makes clear that such a statement (as well as its
withdrawal) 41 regarding a LOR shall be registered in the register for Unitary patent protection.
Such a statement cannot be filed if there is an exclusive licence registered at the EPO or if a
request for recording such exclusive licence is pending. 42 Conversely, a request for registering
an exclusive licence will not be admissible as long as a statement regarding a LOR is on file. 43
The purpose of a LOR is not to shift the patentee’s monopoly from one party to another, but
to disseminate technology on a non-exclusive basis, in return for appropriate compensation.
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Any proprietor for any given technology covered by the Unitary patent can file a statement
that a licence over the invention is available in return for appropriate consideration.
The incentive for the proprietor is that, as of the moment the statement has been received
by the EPO, the proprietor’s renewal fees are reduced by 15 per cent. 44 The main objective
of art.8(1) Unitary Patent Regulation here is to stimulate a broader application of inventions
and consequently trigger further innovation. 45
Negotiating the Terms of an LOR
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Although the Unitary Patent Regulation does not make any such reference, the question
arises as to whether art.8 Unitary Patent Regulation is to be understood in the sense that the
statement is an offer to conclude a “FRAND” licence, meaning a licence on fair, reasonable and
non-discriminatory terms and conditions, such as those for standard essential patents (SEPs).
The FRAND licence stems from patent licensing practice in industries where standardisation
for reasons of compatibility and interoperability is necessary in technologies such as mobile
phones, DVD and WiFi. The subsequent standard is then implemented and if successful and
generally adopted, either legally or practically, forces businesses to make and sell products
and services which conform to the standard. Parties to such standardisation accept the
obligation that if they patent technology that is essential to the set standard, they will report
it to the standardisation body and offer a licence to anyone under FRAND conditions.
See also chapter 2 (Patent Applications and Securing Grant of the Unitary Patent) paragraphs 2-71 to 2-75.
The statement can be withdrawn at any time by a communication to that effect to the EPO. Before withdrawal can take effect,
the patentee first needs to pay back the amount by which the renewal fees were reduced (art.9(1)(c) Unitary Patent
Regulation and r.12(2) Unitary Patent Rules).
r.12(3) Unitary Patent Rules.
r.12(4) Unitary Patent Rules.
See chapter 2 (Patent Applications and Securing Grant of the Unitary Patent), paragraphs 2-71 to 2-75. This results in a €5,333
reduction of renewal fees over the 20-year lifetime of the patent. In Germany and in the UK, in contrast, the reduction
amounts to 50 per cent of the renewal fees (s.23(1) German Patent Law and s.46(3)(d) UK Patents Act 1977).
See Rudyk I, “The Licence of Right, Compulsory Licensing and the Value of exclusivity” (2012), available at:
http://www.sfbtr15.de/uploads/media/415.pdf [Accessed 22 March 2023]; see also Wolbertus R, “The effects of the Unitary
Patent on innovative Small and Medium Enterprises in the Netherlands”, available at:
http://alexandria.tue.nl/extra2/afstversl/tm/Wolbertus_2014.pdf [Accessed 22 March 2023].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 38
