Are there any general points I need to consider for licensing of European patents/patent applications or Unitary Patents?

In the first instance the applicant of a European Patent is the party entitled to prosecute an application and determine thereafter whether to obtain a “traditional” European patent that is to be validated in individual member states of the European Patent Convention or the new Unitary Patent. Despite this, patent licences often confer the right to prosecute patent applications on the licensee. Existing licensors and licensees may wish to check if relevant agreements are in accordance with their wishes. New licences should be drafted in a manner that clarifies which party/parties has/have the right to prosecute a patent application and determine the form in which it is validated post grant.

Licences may also impliedly extend the right to opt out  to licensors. Where this is the case, therefore, one party could take decisions which are detrimental to the other’s interests or contrary to its intentions. Parties to an existing licence may wish to review the provisions of the licence in this regard. New licences should be drafted so that they make clear who has the right to opt out.

If a party commences infringement proceedings in a national court, all future proceedings concerning that patent will have to take place in that same jurisdiction.  Similarly, if that party commences those proceedings in the UPC, all future proceedings will be restricted to the UPC. Licensing further complicates this because:

  • In the first instance the patent owner is the party entitled to commence patent proceedings.
  • However, exclusive licensees also have this right by statute.
  • In any event, this right may also be conferred contractually on exclusive (and perhaps even non-exclusive) licensees in the licence.

One party could therefore lock the other into a litigation strategy without consulting it and against its wishes.

These complications impact on what provisions should go in new patent licences and on what changes should perhaps be made to existing ones.

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