Property in Unitary Patents
What is the law that applies to questions of property in unitary patents?
The unitary patent Regulation (EU) 1257/12, at article 7, states that if the applicant for a unitary patent has, at the time of filing, its principal place of business or its residency in a Member State then the patent shall be treated as if it is governed by the law of that country. Thus a French patentee has its unitary patent governed by French law.
The article then goes on to say that if the applicant has no principal place of business or residency in a Member State then the law governing the property in the unitary patent will be where the proprietor had a place of business at the time of filing. Thus a US patentee, with a place of business in France, has its unitary patent governed by French law. It remains to be seen whether this provision provides the proprietor with some leeway. Many non-European companies may well have plenty of places of business throughout Europe; can they choose which law their unitary patents is to be governed by? The provisions do deal with joint ownership, and the ordering of joint applicants may become significant as a result.
Where the applicant has no place of business within Europe then the default position will be that the law governing the property in the unitary patent or patent application, will be that of the state where the EPO has its headquarters namely, Germany.
Determination of the relevant law will be required in order to determine entitlement issues and also to ensure that assignments, licences and transactions generally in relation to unitary patents are dealt with appropriately for that national law.
Which courts can hear disputes?
Article 32 of the Agreement on a Unified Patent Court 16351/12 sets out the exclusive competence of the new UPC court. This article, in terms, does not grant the court rights to deal with the question of title to a unitary patent. Should a claimant dispute the ownership of a unitary patent it would appear that it remain free to choose to go to a national court.
The Unitary Patent Court may have been granted competency in the question of a counterclaim as to title. Article 32(1)(g) says the court has competency over an action "relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the patent". This is, no doubt principally referring to the question of validity but on the face of the drafting it appears to be granting the court the ability to pronounce on who did the prior using and therefore who might be entitled to the patent.
In determining which national court has competence, the issue identified above as to the difficulty of determining the appropriate law where an entity has a number of places of business in relevant Member States may need to be addressed. In contrast to the current issues in relation to granted European patents, the new system ought to avoid the risk and necessity of determination of the entitlement question under different national laws.
By Hogan Lovells partner, Nicholas Macfarlane