A guide to the UPC and the UP - Flipbook - Page 58
A3-10 As a result of a transfer, the assignor loses his legal position completely; the assignee steps into
the shoes of the assignor. The registration of the change of the owner in the patent register is
not necessary in that it only has declaratory effect. However, pursuant to s.30 German Patent
Act registration has a legitimizing effect insofar as the registered owner is deemed to be subject
to the rights and obligations under the Patent Act. In this regard it should be noted that s.30
German Patent Act may be considered as a mainly procedural provision. Therefore, it is unclear
whether it is covered by the reference in art.7(3) Unitary Patent Regulation which refers to the
rules on property law. In any case, under German law only the legal right holder can perform a
valid transfer of the patent, whether or not such person is actually registered as the patent
holder. Therefore, an acquisition, even in good faith, from a non-entitled party is not possible.
The assignee of a patent or a patent application may demand the confirmation of the transfer
from the assignor by way of a publicly certified document, but the assignee must bear the costs
of doing so. 97
Security
A3-11 Patents are valuable assets and can secure claims as independent loan security. The following
security options are available according to German law: the creation of lien on the patent; 98
a usufruct; 99 or an assignment-for-security. 100 All of these means of security have in common
that they are not subject to any formal requirements. They can be registered, but registration is
not required for the security interest to be valid. However, as noted in paragraph A3-09 above,
an assignment-for-security over a European patent (and a Unitary patent) must be in writing
signed by both parties and, at the request of an interested party can be registered in the EPO.
97
98
99
100
ss.403 and 413 German Civil Code.
ss.1273 et seq. German Civil Code.
ss.1030 and 1068 German Civil Code.
ss.398 and 413 German Civil Code.
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A Guide to the UPC and the UP 48
