The Unitary Patent in contractual practice

New aspects requiring regulation for existing and future contracts

A topic that does not immediately come to mind in relation to the unitary patent system is whether the introduction of the unitary patent is to be taken into account in the context of negotiating patent-related contracts. This includes classical license agreements as well as R&D agreements, consortium agreements and other agreements comprising provisions on the creation or use of patents.

In fact, the introduction of the unitary patent system brings up new aspects in the context of such contracts that need to be regulated and which are often not yet sufficiently taken into account in existing contracts. In particular the following aspects need to be considered when negotiation future contracts and revising existing contracts.

Choice of law by application

Pursuant to Art. 7 of Regulation 1257/2012, the law applicable to a unitary patent as an object of property in all participating member states is determined by where the patent applicant is domiciled or has his principal place of business at the time of filing an application for a unitary patent. Where two or more persons are entered in the European Patent Register as joint applicants for a patent, the domicile or place of businsess of the first-mentioned applicant shall be decisive. Accordingly, in the case of a joint patent application, the question of which applicant is to be designated first may gain considerable importance in the future and should be considered contractually with respect to unitary patents.

Opt-out requests

A quite complex aspect arises in relation to the possibility to file opt-out requests with respect to European patents granted or applied for prior to the expiration of the transitional period.

The right to opt out generally belongs to the owner or applicant of the patent, which can lead to conflicting interests, particularly in the context of exclusive license agreements. Thus licensors and licensee may well come to differing conclusions when weighing the advantages of a uniform enforcement of rights against the disadvantages of the risk of a central attack against the European Patent. The competences regarding the filing and timing of an opt-out request should therefore be contractually regulated.

In this context, it is also significant that, for example, the holder of an exclusive license is in principle independently entitled to file an action under the Agreement on a Unified Patent Court. If the (exclusive) licensee brings an action before the Unified Patent Court before an opt-out has been declared, the patent proprietor loses the possibility for an opt-out. Thus, there may also be a need for new contractual provisions regarding the enforcement of patents. Conversely, this also applies to the possibility of withdrawing from an opt-out once it has been declared, which is only possible as long as no action has been brought before a national court.

As regards granted EP patents, it should also be noted that an opt-out request can only be filed uniformly for all validated parts, which always leads to a need for regulation if the different parts are not held by the same proprietor. In the case of joint ownership, it should also be noted that the opt-out must in principle be declared jointly for all applicants or owners, which requires prior clarification between joint-owners.

Summary

The introduction of the unitary patent gives rise to a whole series of new aspects, which should be taken into account when negotiating patent-related contracts. On the one hand, this applies to future contracts. On the other hand, since this topic will generally not sufficiently be taken into account in existing contracts, existing contracts should also be reviewed in order to discuss open issues requiring regulation between the contracting parties at an early stage. Since opt-out requests should preferably be filed during the sunrise period in order to avoid the risk of losing the option through a lawsuit before the Unified Patent Court, this topic should be addressed as early as possible.