Quarterly International Ip Law Update

Publication year2024
CitationVol. 49 No. 1
AuthorSoody Tronson
QUARTERLY INTERNATIONAL IP LAW UPDATE

AUTHORS

Soody Tronson
STLG Law Firm

Mariana Noli
Noli IP Solutions PC

THE IMPACT OF NATIONAL LAW ON THE UNIFIED PATENT SYSTEM
Introduction

European patents granted by the EPO after June 1, 2023, will have unitary effect in the 17 EU Member States that have joined and ratified the Agreement on the Unified Patent Court ("UPCA"), with more member states expected to join. The unitary patent ("UP") is a single patent with a "unitary" effect in multiple EU countries. The Unified Patent Court ("Court" or "UPC") has sole jurisdiction over unitary patents, and, by default, all European patents ("EP") granted by the European Patent Office, including those already granted. A single renewal fee is payable for all participating countries. The UPC centralizes infringement and validity cases.1

An image courtesy of the European Patent Office that includes a button with the word

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Coverage of European Patents and those with Unitary Effect.
This figure shows the European states and designates which 25 are participating in enhanced coorperation to bring about the Unitary Patent System. Of the 25 EU members, 17 states are in enhanced cooperation and have already ratified the Agreements and will participate in the Unitary Patent System. Also shown are other member states of the 39 EPO states, non-European but EPO Validation and Extension States, and members of Europe but neither of EPO or of EU.
Image description added by Fastcase.

Before a Unitary Patent can be registered by the EPO, the applicant must first obtain a European patent. A European patent application must, therefore, be filed and processed under the European Patent Convention ("EPC") in the same way as classic European patents. The difference is post grant. Once a European patent has been granted, the patent proprietor must submit a "request for unitary effect" to the EPO no later than one month after the date of publication of the mention of the grant in the European Patent Bulletin. To be eligible for registration as a Unitary Patent, the European patent must have been granted with the same set of claims (see section below on "First National Rights") in respect of all the member states participating in enhanced co-operation (25 member states as of the date of this publication).2

During a transitional period of at least seven, perhaps fourteen years, opting out of classic (or traditional) European patents from the UPC's jurisdiction will be possible. Unitary patents, on the other hand, cannot opt out. For the opt-out to be valid for the traditional EP, the opt-out must be signed by all actual proprietors, not just in the UPC countries but all EPC countries where the patent is validated. If a traditional EP is not opted out, it will be treated as a UP, and a third party could launch a Unified Patent Court ("UPC") revocation action to revoke all national patents in UP countries centrally. A patent can only be opted out once, so if the opt-out is withdrawn, the patent cannot be opted out again.3

This brief will highlight some of the key points regarding the impact of national law on implementing the UP in the participating member states.

National Laws Affecting a Unitary Patent

The UPCA explicitly references national legislation (e.g., the national law of a contracting member state where the patent has a unitary effect). National law may sometimes trump the EPC and other national treaties. For example, national law can affect a UP regarding entitlement, employee innovation

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The Unitary Patent as an Object of Property (ART. 7 REGULATION (EU) No 1257/2012)

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(1)(a) Applicant's residence or principal place of business, or if not, then (b) place of business in a conracting member state where the patent has unitary effect

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(2) If joint Applicants, then 1st indicated joint-applicant in patent register, in accodance with (1)

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(3) If no Applicant meets A or B, then German law (EPO headquarter)

disputes, mortgages, assignments, licensing, and co-owner rights. It is important to note that national laws vary greatly on these topics.

A European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating member states as a national patent of the participating member state in which that patent has unitary effect, and where, according to the European Patent Register on the date of filing of the application for the European patent: (1)(a) The applicant had its residence or principal place of business; or (b) If (a) does not apply, the applicant had a place of business. (2) Where two or more applicants have been entered in the European Patent Register as joint applicants, the criteria (1) (a) and (b) are applied, as relevant, to the joint applicant indicated first. (3) Where no applicant had its residence, principal place of business, or place of business in a participating member state in which that patent has unitary effect per criteria 1 or 2 above, the European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating member states as a German national patent (where the EPO is headquartered).4

Joint/Co-Ownership

UPC issues arise in co-owned patents when separate owners own distinct validations. Effective opt-out in these situations is a priority. Joint or co-ownership of an EP can only be excluded from UPC jurisdiction if all owners agree unless there is a formal agreement. Without such an agreement, the opt-out cannot be completed.

  • Agreements between co-owners should be carefully reviewed to uncover any terms that may clarify obligations. If no such provisions are identified, it is prudent for the parties to discuss and reach an agreement.
  • In general, try to avoid joint ownership of patents and use other creative means to separate the interests of the parties.
Priority/Ownership/Assignment

A discrepancy in ownership between...

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