A guide to the UPC and the UP - Flipbook - Page 57
A3-06 The community of joint owners according to ss.705 et seq. German Civil Code is formed as an
association of individuals with its own legal personality. Accordingly, the community of joint
owners is the bearer of the patent rights and not the individual co-owners. The community of
joint owners is entitled to exercise the patent rights and as a result, an individual co-owner has
no right to use the subject matter of the invention. In addition, a co-owner cannot dispose of his
share of the patent independently from the other co-owners. 90 The result is a collective bond of
the property law components of the invention.
A3-07 If there is no specific agreement between the co-inventors, they form a community of partowners pursuant to ss.741 et seq. German Civil Code. The size of the individual shares is
determined by the respective contributions to the invention. 91 According to those provisions,
the patent as a whole cannot be disposed of by a single co-owner, but rather only by the
community as a whole. Likewise, licenses can only be granted if all co-owners of the patent
agree. However, each co-owner may use the patent independently of the respective shares as
well as the will of the other co-owners 92 and without a duty to compensate the other co-owners.
Each co-owner may also assign its share in the patent (along with the right to use it
independently of the other co-owners. Finally, each co-owner has the right to demand
cancellation of the co-ownership at any time in which case the patent must be sold and the
proceeds divided between the share owners. Accordingly, an agreement concerning the use
and the permission to use the patent is advisable in the case where having a plurality of
inventors leads to co-ownership of the patent rights.
Assignment
A3-08 The patent right as such, the right to the patent and the rights that derive from the patent can
be transferred to others either with or without restrictions. 93 This applies to the pecuniary
content of the listed rights; the inventor’s moral right as a personal right cannot be inherited
or transferred.
A3-09 The assignment does not have to be in writing or contain any formalities. 94
However, assignments should be in writing for both clarity and evidentiary purposes.
It should be further noted that assignments of European patents have to be in writing and
signed by both parties to be valid, 95 and they may be recorded on the EPO Register at the
request of an interested party. The same applies to Unitary patents. 96 The inventor may
transfer his patent rights before the filing of a patent application. However, the transfer
requires the completion of the invention such that there is no doubt as to what is being
transferred. Even rights to future inventions can be transferred, provided the future inventions
are sufficiently determinable. The transfer can be made to a single assignee or to a number of
assignees creating joint ownership (see paragraphs A3-02 to A3-07 above).
90
91
92
93
94
95
96
s.719(1) German Civil Code.
If in doubt, it is assumed that the part-owners are entitled to equal shares, cf. s.742 German Civil Code.
s.743(2) German Civil Code.
s.15(1) German Patent Act.
ss.398 and 413 German Civil Code.
art.72 EPC, rr.22 to 24 EPC Implementing Regulations.
r.16(1)(j) Unitary Patent see also paragraphs 3-72 to 3-77.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 47
