The entry into force of the UPC is an unprecedented change in the patent law landscape in Europe.
This new system brings about changes in almost all areas of patent portfolio management.

These changes require contractual practices to be updated to take account of these new tools, whether they be co-ownership agreements, collaboration and research contracts, assignment contracts or license agreements.

It is recommended to integrate several new clauses into its contractual practice, as well as to conduct an audit of the contracts already concluded and, if necessary, to supplement them by means of an amendment.

The opt-out

The question of whether to give a European patent unitary effect, or whether to submit a European patent to the jurisdiction of the Unified Patent Court (“stay-in” or “opt-out”), must now be addressed in intellectual property contracts.

It is important to provide a mechanism in coownership agreements for the co-owners to decide on these issues together.

It should also be determined how the co-owners will liaise with the offices and registry of the Unified Patent Court, or with a patent attorney firm.

A known mechanism consists of appointing a co-owner as a representative of them all, in charge of these steps.

In licence agreements, especially in the case of exclusive licences, it may be appropriate to involve the licensee in this choice.

Co-ownership

The Unified Patent Court system treats European patents with unitary effect as an object of property under national law (1) .

Several criteria are defined depending on the situation and whether the patent is filed by one or more applicants.

By default, the patent will be assimilated to the national patent of the applicant’s place of residence or principal place of business.

In the case of multiple applicants, the first registered applicant will take precedence. Other mechanisms are also in place to cover different situations. For example, if none of the applicants is located in Europe, the patent will be considered a German patent.

It is therefore particularly important to be vigilant in collaboration contracts to choose precisely the law applicable to the patents that will be filed.

The right to act and the organisation of litigation Industrial property contracts should also provide for the modalities of action before the Unified Patent Court, in particular in cases where they are based on European patents with unitary effect.

The European patent with unitary effect allows protection to be obtained throughout the territory of the member States, but also risks being invalidated throughout that territory with a counterclaim for invalidity. It is therefore necessary to organise these disputes in the various contracts.

The Unified Patent Court Agreement provides in particular for the possibility for the exclusive licensee (as opposed to the non-exclusive licensee) to act before the UPC, under the same conditions as the patent owner, provided that the latter has been informed in advance. This mechanism can be arranged by contract. (2)

It does not provide for any particular mechanism concerning co-owners.

These two cases therefore require precise contractual provision:

• Who can decide to act (one or more of the co-owners, a possible exclusive licensee, etc.) and who will be a party to the action brought;
• Which party decides on the procedural strategy to be adopted (which local and/or regional division should be petitioned, when a choice is available; in which language to request the proceedings take place; whether or not to use the order to preserve evidence procedure; choice of representative; or any other strategic decision to be adopted…);
• Which party will finance actions before the Unified Patent Court, and which party will reap the benefits, in particular the damages arising from such an action.

The LAVOIX teams remain at your disposal to review your portfolio of contracts, to analyse the mechanisms already provided for in the light of the Unified Patent Court, or to draft any document or amendment necessary to achieve your objectives.

(1) Article 7 of Regulation No 1257/2012 of 17 December 2012

(2) Article 47 of the Unified Patent Court Agreement