European patent with unitary effect (UP) and the Unified Patent Court (UPC) will enter into force on June 1, 2023. Proprietors of European patents need to be ready for the changes to come and as of now take strategic decisions, in particular in relation to agreements. Here are the main points to look out for to safeguard your rights in relation to your contractual relations.
Co-ownership Agreement
- Manage the unitary effect
Time limit to request unitary effect: 1 month from the mention of the grant of the European patent. Co-proprietors must now come together to agree about European patents in course of grant.
- Manage the opt-out request.
The opt-out request must be presented by all proprietors together. Co-proprietors must therefore come together now to request opt-out as of the start of the “sunrise period” – expected on March 1, 2023 – and before any action can be brought before the UPC by a third party.
- Co-ownership arrangements for the unitary patent
It is important to establish the co-ownership arrangements in the agreement. Failing this, the arrangements will be determined by the national law of the state of domicile of the main establishment of the first applicant entered on the European patent register at the date of filing the European Patent application.
License agreements
- Manage the unitary effect
Only the proprietor of a European patent can request unitary effect. The licensee can merely participate in taking the decision, or have the decision attributed to it, if the license agreement so provides. If the licensee wishes to be involved in the decision, the license agreement must provide for them to be consulted.
- Manage the opt-out request
The opt-out request may be made:
♦ By the proprietor of the European patent or European Patent application
♦ For all states for which the European patent has been granted or which have been designated in the patent application. The license agreement must provide in advance for the licensee to be consulted if so wished.
- Conditions for filing infringement proceedings by licensees before the UPC
Licensees may institute infringement proceedings if the following cumulative conditions are met:
Risks for the patent proprietor in case of infringement proceedings brought by the licensee or licensees before the UPC: revocation of the unitary patent / inability for the proprietor to request opt-in/opt-out:
► If the proprietor wishes to maintain control over infringement proceedings, the license must provide for this.
- Territory of the license
A European patent with unitary effect may be the subject of a license for some or all territories of the member states. The license agreement of a unitary patent must define the applicable territory.
