Current Provisions in EPC Territories
The laws of a number of European countries have provisions which allow the Proprietor of a patent to obtain significant reductions in renewal fees, if it is prepared file a statement with the Patent Office of the country concerned that it is prepared to allow any person to use the invention as a licensee in return for appropriate consideration.
The statement offering licences of right is basically an offer to conclude a licence on FRAND (fair, reasonable and non-disciminatory) terms and conditions. The table below compares the provisions for licences of right in EPC territories that provide for these:
Austria, Belgium, Bosnia & Herzegovina, Switzerland, Cambodia, Cyprus, Denmark, Estonia, Finland, France, Croatia, Hungary, Iceland, Liechtenstein, Monaco, Moldova, Macedonia, Montenegro, Netherlands, Norway, Poland, Portugal, Romania, Serbia, Sweden, Slovenia and Tunisia.The following EPC Territories do not have provisions for licences of right:
In the UK, the statement that licences of right are available must include a declaration by the Patentee that there is no existing licence under the patent or that all licensees consent to the application. It is not possible to file a statement regarding licences of right while an exclusive licence is recorded, unless the licensee consents.
Under UK law, the patentee may subsequently withdraw its statement, but the withdrawal will not be effective until repayment of the amount by which the renewal fees have been reduced.
The other EPC territories which provide for licences of right are believed to have similar provisions – for more detailed advice please contact us.
Provisions with respect to Unitary Patents
It will be possible, when the new European Unitary Patent comes into force, to file a similar statement in respect of a Unitary Patent, that the proprietor is prepared to grant a licence on reasonable terms, in order to secure a reduction in the amount of renewal fees payable, in the same way as is provided for by national law, as discussed above.
The statement will need to be filed with the EPO, and will be entered in the Register of Unitary Patents. It will result in a reduction of subsequent renewal fees by only 15%, rather than 50%.
The Unified Patent Court will have exclusive competence in disputes on the level of the licence fees, but not with regard to any other matters in the licence that might be in dispute.
The question of what is the applicable law of contract for general contractual matters is not entirely straightforward, but is defined by the Unitary Patent Regulation as being the national law of the participating Member State in which, according to the European Patent Register:
(a) the applicant had its residence or principal place of business on the date of filing of the application for the European patent; or
(b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent.
For joint applicants, question (a) is applied to the first indicated applicant. Where this does not provide an answer, question (a) is applied to the next listed joint applicant and so on.
Where none of the joint applicants had its residence or principal place of business in a participating Member State on the date of filing of the application for the European patent, question (b) is then applied, in the same order (i.e. first-listed applicant first), until the appropriate Member State is identified. If none of the applicants had, on the date of filing the patent application, a residence, principal place of business, or place of business in a participating Member State in which the patent has unitary effect, then German law is applied.
If the patentee subsequently withdraws its statement regarding licences of right, the withdrawal will not be effective until repayment of the amount by which the renewal fees have been reduced. It is not possible to file a statement that licences of right are available while an exclusive licence is recorded.
