A guide to the UPC and the UP - Flipbook - Page 54
– In the case of licences of granted European patents, who should decide whether to opt out
of the Court’s jurisdiction in respect of such patents and/or on what basis the decision
should be made; 76
– In the case of licences of granted European patents which have been opted out, who should
decide whether the opt-out should subsequently be withdrawn, and/or on what basis the
decision should be made;
– Whether the decision to opt out, or to opt in again, requires prior notice to be given to the
other party(ies), and/or consultation, and/or consent; and
– Exclusion of any statutory right of an exclusive licensee to bring infringement proceedings.
Register for Unitary Patent Protection
3-72
There is a “register for unitary patent protection” provided for in the Unitary Patent
Regulation. This register is defined as constituting part of the European Patent Register in
which the unitary effect and any limitation, licence, transfer, revocation or lapse of a Unitary
patent is registered. 77
3-73
The Unitary Patent Regulation does not contain any provision with regard to the procedure for
registration of a licence or other interest against a Unitary patent. 78 All it does is make clear that
the acquisition of a right may not be dependent on any entry in a national patent register. 79
However, the EPO has dealt with the issue of registration of interests in the Unitary Patent
Rules. R.16(j) Unitary Patent Rules provides that the register for unitary patent protection shall
contain entries for rights and transfer of such rights relating to the European patent with
unitary effect where the Rules provide that they shall be recorded at the request of an
interested party. Further r.20(2)(b) Unitary Patent Rules provides that rr.22 to 24 EPC
Implementing Regulations apply mutatis mutandis to entries made in the register for unitary
patent protection to ensure full alignment with current EPO practice. 80 Therefore, transfers of
Unitary patents 81 and the grant or transfer of licences 82 etc. will be recorded at the request of
an interested party.
3-74
Although the explanatory note is not entirely clear, it seems that the EPO Select Committee is
of the opinion that the registration of transfers, licences and other rights (such as rights in rem,
pledges, security interests etc.) in respect of a Unitary patent is not mandatory, but they may be
registered in those cases where rr.22 to 24 EPC Implementing Regulations provide that this can
be done at the request of an interested party. 83
Effect of Registration of an Interest Against a Unitary Patent
3-75
76
77
78
79
80
81
82
83
It is clear that the EPO will make the necessary arrangements to allow for the registration of
interests against a Unitary patent. However, initially, there is nothing in the Unitary Patent
Regulation or the Unitary Patent Rules specifying the effect of registration of such interests
against a Unitary patent, nor are there any priorities specifying when and in what circumstances
such interests should be registered, nor what the consequences of failing to do so might be.
Thus, for example, there is nothing in the Unitary Patent Regulation about the effect or
See chapter 8 (Transitional Provisions (Including Opt-outs and Opt-ins)).
art.2(e) Unitary Patent Regulation.
Confirmed explanatory note 5 to r.16 Unitary Patent Rules.
art.7(4) Unified Patent Regulation.
See also explanatory note 6 to r.16 Unitary Patent Rules.
r.22(1) EPC Implementing Regulations.
r.23(1) EPC Implementing Regulations.
See the Draft Rules 1 – 24 relating to Unitary patent protection – consolidated version as approved in principle on 9
December 2014, page 51/83 https://documents.epo.org/projects/babylon/eponet.nsf/0/658AE58124A
C70DBC1257DB10028B3D4/ $File/e_draft_rules_unitary_patent.pdf [Accessed 3 April 2023].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 44
