A guide to the UPC and the UP - Flipbook - Page 53
noted that these compulsory licence provisions are rarely used in practice and, with the
much broader coverage afforded by the Unitary patent, it would seem less likely that a patentee
is not practising the invention within the jurisdiction in circumstances where a third party is
interested in doing so. The European Commission launched a public consultation in July 2022
seeking views on the compulsory licensing of patents in the EU. Following that consultation,
the Commission published on 27 April 2023 as part of its latest EU patent package a proposal
for a Regulation on compulsory licensing for crisis management so as to enable the
Commission to be adequately prepared and coordinated to tackle future crises such as
the COVID-19 pandemic. 68
3-69
The list of matters for which the Court has exclusive competence does not include compulsory
licences and therefore national courts have competence for actions in relation to compulsory
licences 69 and will apply national law, as is clear from recital 10 Unitary Patent Regulation which
states that:
“Compulsory licences for European patents with unitary effect should be governed by the laws
of the participating Member States as regards their respective territories.”
3-70
Although recital 10 Unitary Patent Regulation proceeds on the assumption that this issue will be
subject to a mosaic of different national approaches, it has been suggested that if compulsory
licences are considered a limitation of the Unitary patent, 70 the recital 10 approach would be
contrary to the unitary character of the Unitary patent as defined in art.3 Unitary Patent
Regulation. However, it should be noted that the TRIPS Agreement distinguishes between
limitations (“exceptions”) and “certain other uses without authorisation from the right holder”
including compulsory licences 71 and therefore the two are not in conflict per se. 72 Further, it
seems possible to interpret art.3 Unitary Patent Regulation to comprise compulsory licenses
since Unitary patents may be licensed in respect of the territory of just one Participating
Member State. 73 Alternatively, recital 10 Unitary Patent Regulation could be regarded as an
unwritten conflict of laws rule, thereby superseding art.7 Unitary Patent Regulation. 74 As
commentators have noted, the CJEU may eventually have to decide this matter. 75
Licensing European Patents
3-71
Licences in respect of European patents and applications are dealt with in the “traditional way”.
Clauses to consider in any such licence agreements include:
– In the case of licences of European patent applications, who should decide whether to
designate these as European patents with unitary effect;
68
69
70
71
72
73
74
75
Proposal for a Regulation of the European Parliament and Council on compulsory licensing for crisis management and
amending Regulation (EC) 816/2006. https://single-market-economy.ec.europa.eu/system/files/202304/COM_2023_224_1_EN_ACT_part1_v11.pdf [Accessed 2 May 2023].
art.32 UPCA. See chapter 6 (Jurisdiction, Competence and Forum Shopping) paragraphs 6-06 to 6-09 dealing with the actions
in relation to which the Court has competence. The list of action does not include an action for a compulsory licence and
therefore presumably also the Court does not have competence in relation to a counterclaim for a compulsory licence.
However, if contrary to this presumption, the Court does have competence in relation to such a counterclaim, the provisions
of art.5A Paris Convention and arts 8 and 31 TRIPS Agreement on compulsory licensing may be engaged (see chapter 7
(Applicable Law) paragraphs 7-57, 7-59 and 7-61).
art.3(2) para.2 Unitary Patent Regulation.
arts 30 and 31 TRIPS Agreement and arts 27 and 28 UPCA.
Petersen CS, Riss T and Schovsbo J, “The Unified Patent Court (UPC), Compulsory Licensing and Competition Law”,
Nordiskt Immateriellt Rättsskydd, 2014, 4/2014, pp.324 to 339, available at http://ssrn.com/abstract=2489006
[Accessed 23 March 2023].
art.3(2) para.3 Unitary Patent Regulation.
Drexl J “Art.5 Unitary Patent Regulation”, in “Münchener Kommentar zum BGB”, 6th edn (Munich: CH Beck, 2015)
marginal no. 148.
Petersen CS, Riss T and Schovsbo J, “The Unified Patent Court (UPC), Compulsory Licensing and Competition Law”, 2014, at
the conclusion to para.3.1.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 43
