A guide to the UPC and the UP - Flipbook - Page 52
– The patent proprietor must be joined in any action where validity is contested.
3-62
Having regard to the definition of “patent” in arts 2(g) and 3 UPCA there is no doubt that arts
47(2) to (5) UPCA apply to both Unitary patents as well as traditional European patents that are
subject to the Court (i.e. non-opted out European patents under art.83(3) UPCA that are
litigated before the Court). 63 This means that not only the drafting of future licence agreements,
but also licence agreements concluded in the past which are based on a traditional European
patent, need careful review.
3-63
The first reason for this is that an exclusive licensee is entitled to bring an infringement action
before the Court, unless the parties to such an agreement have agreed otherwise. Apparently,
there is no requirement that the licensing agreement be in writing. The only requirement for
such an exclusive licensee to start the action is that it gives the patentee prior notice which
can seemingly even be done orally. Furthermore, in the absence of agreement to the
contrary, it can be done on short notice since there is no specific notice term that needs to be
taken into account.
3-64
With reference to art.47(2) UPCA, a relevant question is whether “exclusive” means that the
patentee itself is still able to perform the exclusive acts which are conferred by the patent 64
or whether “exclusive” means that even the patentee is not allowed to perform such acts.
It seems likely that the latter interpretation is correct bearing in mind the rights conferred
on exclusive licensees, for example, in terms of bringing infringement proceedings.
3-65
If an action is brought before the Court, art.47(4) UPCA states that the patentee shall be entitled
to join the action. This seems to provide some control over the litigation by the patent
proprietor, but in any event, under art.47(5) UPCA the patent has to be joined to the action
if the validity of the patent is contested or is put in issue by way of a counterclaim.
3-66
If a patent holder is not the claimant in an infringement action, the Court Registry will serve a
copy of any counterclaim for revocation on the person shown as the proprietor in the EPO
register (for Unitary patents) and in the relevant national patent register (for European
patents). 65 By doing so, the patent proprietor becomes a party to the revocation proceedings.
If the proprietor chooses not to file a defence to the counterclaim within two months, a default
judgment invalidating the patent may be granted. 66 In light of this, any licence agreement which
allows a licensee to bring an action for infringement should also deal with who has the primary
right to conduct the defence of the validity of the patent and who will meet the costs of so
doing. If the patentee wishes to control the litigation, it should provide that the licensee is not
allowed to bring an infringement action.
Non-exclusive Licences over Unitary Patents
3-67
According to art.47(3) UPCA, a non-exclusive licensee who has been expressly permitted to
bring proceedings for infringement, is entitled to bring an action. Again, the patentee needs to
be given prior notice but there is no requirement for it to be in writing or that it be given a
certain period of time before the action is lodged.
Compulsory Licences over Unitary patents
3-68
63
64
65
66
67
Currently in the patent legislation of most Participating Member States there are provisions
allowing for a third party to apply to the national court for a compulsory licence, normally on
the basis that the patentee is not practising the invention within the jurisdiction. 67 It should be
See chapter 8 (Transitional Provisions (Including Opt-outs and Opt-ins)).
art.5 Unitary Patent Regulation in conjunction with arts 25 and 26 UPCA.
r.25(2) RoP. See chapter 12 (Written Procedure) paragraphs 12-68.
r.355 RoP.
See for example s.24 German Patent Act.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 42
