A guide to the UPC and the UP - Flipbook - Page 51
– Information on the filing of the LOR statement at the EPO; 57 and
– The licence agreement. 58
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This last condition, that the application includes the licence agreement, may appear odd when,
in all probability in the majority of cases, a dispute about appropriate compensation will arise
prior to reaching an agreement. Presumably, the proposed agreement, or the negotiation
documents that lead to the licence, are covered by this provision.
3-59
The actual course of these proceedings is not expected to differ significantly from damages
proceedings before the Court. The rules on the determination of damages, i.e. rr.132, 133, 134,
135 and 137 to 140 RoP apply mutatis mutandis to disputes regarding the determination of
appropriate consideration. 59 This sole reference to damages proceedings suggests that if the
patentee considers it necessary, for example, where a party is unwilling to enter into any
licence, a separate claim for infringement can be brought, including a claim to an injunction,
rather than merely counterclaiming for infringement in the LOR proceedings. In principle, a LOR
statement should not make a patent less suitable for enforcement 60 except where there is an
abuse of a dominant market position or other violation of EU competition law. 61
Concluding Comments on LOR
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It remains to be seen how the provisions on LOR will develop. This is especially the case for
patents which a patentee no longer uses. Such patents are often inactive in a patentee’s
portfolio or simply forgotten or abandoned because it takes too much effort to find an
interested licensee. The EPO register could function as a central auction place for patents which
are available for licensing. The advantage to the proprietor is that there will be a reduction in
renewal fees for such patents and there may subsequently be additional income. In the same
way, the LOR might be a useful tool for universities and research organisations wishing to find
ways to exploit the innovative results of their research. It should be noted that this will only be
available for Unitary patents, not for traditional European patents.
Exclusive Licences over Unitary Patents
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Another main principle of licensing follows from art.47 UPCA. This article clearly states that a
licence in respect of a Unitary patent can be exclusive or non-exclusive. When it is exclusive,
there are important legal and procedural consequences: 62
– An exclusive licensee can bring actions before the Court under the same circumstances as
the patent proprietor, provided that the patent proprietor is given prior notice and that the
licence agreement does not expressly preclude such action;
– A non-exclusive licence cannot bring actions before the Court, unless the patent proprietor is
given prior notice and only in so far as expressly permitted by the licence agreement;
– The patent proprietor is entitled to join actions before the Court brought by licensees;
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Under art.8(1) Unitary Patent Regulation.
Under art.8(2) Unitary Patent Regulation.
r.80(2) RoP. See chapter 15 (Remedies) paragraphs 15-42 to 15-51.
In contrast, designating a patent as subject to LOR under the UK legislation has the effect of potentially limiting the grant of
an injunction or an award of damages in infringement proceedings. S.46(2)(c) Patents Act 1977 states that “if in proceedings
for infringement of the patent (otherwise than by the importation of any article from a country which is not a Member State
of the [EU]) the defendant … undertakes to take a licence on such terms [as settled by agreement or by the comptroller] no
injunction … shall be granted against him and the amount (if any) recoverable against him by way of damages shall not
exceed double the amount which would have been payable by him as licensee if such a licence on those terms had been
granted before the earliest infringement.”
See chapter 15 (Remedies) paragraphs 15-07 to 15-31 on granting an injunction.
arts 47(2) to (5) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 41
