Unitary Patents: Joint ownership and governing law

The Unitary Patent system is finally due to go live on 1 June 2023 and transitional measures are already in place to assist applicants for European patents to obtain Unitary Patents on the start date (if desired). Now is therefore an important time for innovative companies and institutions to familiarise themselves with this new system.

In addition to taking important decisions such as whether or not to opt out existing European Patents from the jurisdiction of the UPC, companies and institutions should also be considering what impact the new system may have on their future patenting strategies and how these should be reflected in their contractual arrangements. One such point to consider relates to joint ownership of Unitary Patents and the contractual provisions which parties should consider putting in place to implement joint ownership.

It is not uncommon for entities to agree joint ownership of patents, particularly in the context of research collaborations where it is often difficult to clearly distinguish contributions made by each party. Joint ownership can often therefore seem fair and equitable and, if implemented well, can be a workable solution. However, as laws relating to joint ownership vary between jurisdictions there are a number of points which we would recommend joint owners consider and contractually agree between them.

One interesting quirk of the new Unitary Patent system is that the applicable law which governs a Unitary Patent as a piece of property (and which therefore will govern questions such as each party’s ability to exploit, licence and assign a co-owned Unitary Patent) can vary depending on which co-owner is listed first on the patent application. What may therefore at first appear to be an arbitrary decision on who to list first in a patent application, could potentially have long lasting consequences for commercialisation.

In this article, hosted on our dedicated UPC microsite, we discuss the rules which determine the governing law of a co-owned Unitary Patent as an item of property, and the issues that parties should therefore consider agreeing contractually.