A guide to the UPC and the UP - Flipbook - Page 56
Annex
German Property Law as Applicable to Unitary Patents
A3-01 As noted in this chapter, 85 art.7 Unitary Patent Regulation provides a set of rules on how to
determine the national law that governs the Unitary patent as an object of property. In the
event that the applicant does not have its residence, principal place of business or a place of
business in a Participating Member State in which the patent has unitary effect, the Unitary
patent is treated (as an item of property) as a national patent of the state where the EPO has its
headquarters 86 i.e. Germany. Therefore, German law will apply to issues such as the coownership and assignment of Unitary patents and the provision of security over such patents.
This following is a brief summary of applicable German law.
Co-ownership
A3-02 If several inventors have jointly made an invention, they have the right to the patent
commonly. 87 Co-ownership can only be granted to a patent application in its entirety and not to
parts of the application, for example an individual patent claim.
A3-03 The prerequisites for a joint invention are not regulated by law. The jurisprudence of the
Federal Supreme Court refers to the joint draft of the subject matter of the invention. It is
sufficient that the actions of each participant have contributed to solving the technical problem.
The contributions of the co-inventors have to be creative, which excludes mere supporting
manual work as well as the provision of funding or equipment. However, it is not necessary that
each contribution itself can be regarded as inventive.
A3-04 A joint invention must be distinguished from the situation where several inventors make the
same invention independently (a double invention). In this latter instance, the patent right
belongs to the person who registered the invention at the Patent Office first. 88 However, the
prerequisite for a double invention is that the technical teaching developed by several inventors
independently is identical.
A3-05 The German Patent Act does not provide any rules on the legal relationship between coinventors. Co-inventors can regulate their legal relations unrestrictedly. In principle, such an
agreement results in a community of joint owners pursuant to ss.705 et seq. German Civil Code.
In the absence of a specific agreement or contract between the co-inventors, they are regarded
as a community of part-owners according to ss.741 et seq. German Civil Code. Both forms have
in common that a single co-owner cannot dispose of the jointly held patent as a whole without
the consent of the other owners. Rather, this decision must be made by all inventors. 89
However, the two forms of patent co-ownership have two major differences concerning the
exercise of the right to the invention.
85
86
87
88
89
See paragraphs 3-02 to 3-17.
art.7(3) Unitary Patent Regulation.
s.6, second sentence German Patent Act.
s.6, third sentence German Patent Act.
ss.718(1) and 747, second sentence German Civil Code.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 46
