4. Review/amend co-ownership agreements and take Unitary Patent System into account in new co-ownership agreements
When there are multiple owners of a (European or Unitary) patent, the following issues should be considered:
1. The rights of co-owners of a Unitary Patent.
- Right to bring infringement actions and right to grant licences are determined by the national law applicable to the Unitary Patent as an object of property.
- Rules relating to co-ownership differ from country to country and co-owners need to take this into account when drafting their contract.
2. Revocation action
- If there are different owners of a European Patent in different countries, any application for its revocation must, under the UPC, be brought against all of them.
- This needs to be anticipated in the contract (including costs issues).
- Under the 18th Draft Rules of Procedure of the UPC, an opt-out for a European Patent must be declared by all owners.
- Opting-out is no longer possible if one of the owners of a national part of the European Patent has brought an action before the UPC.
- Opting-in is no longer possible if one of the owners of a national part of the European Patent has brought an action in a national court.
- Need to agree on a common opt-out and litigation strategy in the contract.
4. Applicable law to the patent as an object of property
- The applicable law is the law of the Participating Member State in which the co-owner first listed on the application form has his residence or principal place of business on the date of filing of the patent application.
- This needs to be anticipated when filing the patent application.