UP and UPC licensing issues
As regards the unitary patent, it will be the applicant who has the choice of selecting a unitary patent.
Licence agreements are likely to address the question of who deals with the prosecution and validation of pending European patent applications, and these should cover, in general terms, the unitary patent option. They will not however deal with it specifically, and there are of course important financial aspects of the choice.
There are several different licensing issues relevant to the Unified Patent Court.
- With regard to the opt-out for conventional European patents, only the proprietor can do this. For licensees who operate under patents of great importance to their business, especially exclusive licensees, opting out may be an important consideration.
- The UPC Agreement anticipates that all licensees – exclusive or non?exclusive – may have the ability to bring infringement proceedings, depending on the terms of the licence.
- The UPC Agreement has a provision relating to declaratory actions whereby a proprietor or a licensee may be approached for "clearance" under a patent. Failure to respond to that approach, or a negative answer, could give rise to a declaratory action in the central division of the UPC.
What steps should I be taking now to address these issues?
It is advisable to review licences relating to pending EP applications and consider who has control over the UP option.
In addition, it is advisable to review licences to consider who has control over opting out decisions, litigation (including whether exclusive or non-exclusive licensees should have the right to sue in the UPC), and responses to requests for "clearance" as noted above. Most licences will have some general provisions that may apply to these circumstances but few if any will deal with them specifically. It is advisable to consider whether these situations should be specifically addressed, and certainly they should be dealt with for future licences. In any case, to avoid contractual disputes, both licensors and licensees should check whether there are any control provisions relevant to all of these issues, and comply with them.