What Does The Unified Patent Court (UPC) Mean For Licensing?

• Published date: 25 April 2023
• Subject Matter: Intellectual Property, Licensing & Syndication, Patent
• Law Firm: VO Patents & Trademarks
• Author: Ms Annelies de Bosch Kemper-de Hilster

The new unitary patent and related court (Unified Patent Court, UPC) is expected to go into effect on 1 June 2023. The new unitary patent and UPC rules directly affect existing and new license agreements. It is important to review your license agreements (or have them reviewed). We briefly list the most salient points of attention below.

Proceedings

Under the new rules, holders of exclusive licenses of both European and unitary patents can now initiate infringement proceedings before the UPC. An exclusive licensee instituting an action must inform the patent holder in advance, but the patent holder cannot stop the licensee. If it is not the intention that an exclusive licensee can initiate proceedings independently, this can be agreed upon in the license agreement. Non-exclusive licensees cannot institute infringement proceedings before the UPC unless otherwise specified in the license agreement.

Joinder

Under the new UPC rules, the patent owner can always join a proceeding initiated by a licensee. If the contracting parties want to exclude that possibility, it must also be specified in the license agreement.

Withdrawal of jurisdiction UPC (Opt-out)

The patent holder, as well as the co-owner of a patent, has the right to apply for an opt-out. The effect of such an opt-out is that any proceedings relating to existing European patents cannot be handled by the UPC; only the national courts would then retain jurisdiction. The opt-out applies in principle for the entire term of the patent, but can be revoked later. If the patent holder makes an opt-out request, an exclusive licensee under Dutch law - contrary to the above - can no longer initiate proceedings independently. This is regulated differently in other countries. Under German and Belgian law, exclusive licensees would still be allowed to initiate proceedings independently in the event of an opt-out.

Concurrence/blocking

An opt-out is no longer possible if proceedings...