{"id":9004111222102157,"date":"2016-05-16T07:14:07","date_gmt":"2016-05-16T06:14:07","guid":{"rendered":"https:\/\/www.hgf.com\/?p=9004111222102157"},"modified":"2026-02-18T13:26:19","modified_gmt":"2026-02-18T13:26:19","slug":"upc-impact-on-licenses-ownership-spcs","status":"publish","type":"post","link":"https:\/\/www.hgf.com\/de\/knowledge-hub\/legal-updates\/upc-impact-on-licenses-ownership-spcs\/","title":{"rendered":"The UPC’s impact on licenses, ownership and SPCs"},"content":{"rendered":"
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In amongst the general discussion about the unitary patent and UPC, there are a number of important but easily overlooked issues. In this the third brie\ufb01ng note of our series we look at the issues of licences, ownership and SPCs in the context of UPs and the UPC. As part of your plan to be UPC Ready, the impact on each of these should be carefully considered. Taking action now will allow you to make e\ufb00ective preparations for the start of the new system.<\/p>\n<\/div>\n

The position of licensees<\/h5>\n

All licensees of European patents (EPs) will be a\ufb00ected by the introduction of the UPC. If no action is taken, all existing EPs will be subject to the jurisdiction of the UPC so decisions need to be made as to whether it is appropriate to opt-out existing EPs from the jurisdiction of the new court. Unfortunately, licensees (even those who operate under an exclusive licence) will have no automatic right to be involved in the decision of whether an EP they have licenced should be opted out. Absent any agreement to the contrary, the patent owner could therefore make its own decision on exercising the opt-out without reference to its licensee(s).<\/p>\n

So, what can licensees do to protect their position? Early dialogue with the patent owner is key. The licensee should decide upon its preferred opt-out strategy and communicate this to the patent owner. There will be a short period of time to opt-out EPs before the UPC comes into existence (sunrise period) and this period could begin as soon as late 2016 so action needs to be taken now. If EPs are not opted out during the sunrise period, a third party could initiate a central revocation action as soon as the UPC comes into existence, e\ufb00ectively trapping the patent in the UPC system.<\/p>\n

In many cases the interests of the licensee and patent owner will be aligned. However there may be disagreement; perhaps a genuine di\ufb00erence of opinion or even an opportunistic attempt by the patent owner to renegotiate the terms of the licence. The patent owner may also \ufb01nd itself in a di\ufb03cult position if it has multiple licensees who have di\ufb00erent views as to whether the licensed patents should be opted out. In the event of disagreement it is unlikely that existing licence agreements will help to resolve the issue, although a detailed review of licence terms would still be worthwhile.<\/p>\n

Impact on other agreements<\/h5>\n

Don’t forget that licences of patents can also arise from many other types of agreements, such as material transfer agreements, research and contract services agreements, manufacturing agreements or development and commercialisation agreements. It is unlikely that such agreements will already contain speci\ufb01c clauses which deal with the opt-out issue or future validation of EPs as UPs. Your UPC Ready strategy should include a review of such agreements to see if any action needs to be taken now.<\/p>\n

New IP agreements<\/h5>\n

Any new agreements containing clauses which regulate the ownership and use of patents in Europe need to take into account the impact of the UPC. In particular the following issues should be addressed:<\/p>\n