WHICH NATIONALITY FOR A PATENT WITH UNITARY EFFECT?

The patents’ nationality in case of joint ownership is determined by Article 7 of Regulation 1257/2012 which states:

« 1. As an object of property, the European patent with unitary effect shall be treated in its entirety and in all participating Member States as a national patent of the participating Member State in which it has unitary effect and where, according to the European Patent Register

 

a) the applicant had his domicile or principal place of business on the filing date of the European patent application; or


b) where point a) does not apply, the applicant had a place of business on the date of filing of the European patent application.

 

2. If two or more persons are recorded in the European Patent Register as co-applicants, paragraph 1. a) shall apply to the first co-applicant recorded. Otherwise, paragraph 1.a) shall apply to the next co-applicant in the order of registration. Where paragraph 1.a) does not apply to any of the co-applicants, paragraph 1.b) shall apply accordingly.

3. If no applicant is domiciled, has his principal place of business or has an establishment in a participating Member State in which the patent has unitary effect for the purposes of paragraph 1 or 2, the European patent with unitary effect as an object of property shall be treated in its entirety and in all participating Member States as a national patent of the State in which the European Patent Office has its seat, in accordance with Article 6(1) EPC.

4. The acquisition of a right may not depend on an recordal in a national patent register." 

 

The solutions thus follow the following table:          

 

The patent is co-owned, concluded between : Patent nationality
Two actors from the same UPC member state

The patent is of the nationality of the co-owners.

Example: One of the co-owners is French and the other is German.

Solution: If the patent was registered first by the French co-owner, the patent will be subject to French law.

Two actors from two different UPC member states

The patent is of the nationality of the first owner recorded in the European Patent Register.

-  Example: One of the co-owners is French and the other is German.

Solution: If the patent was recorded first by the French co-owner, the patent will be subject to French law.

 
-  Example 2: One of the co-owners is French and the other is American with an establishment in Ireland.

Solution:

• If the first to be recorded is the French, the patent will be subject to French law.

• If the first to be recorded is the American, the patent will be subject to Irish law (because of its establishment in Ireland).

A UPC member state and a country outside Europe

The patent is of the nationality of the co-owner UPC member state.


Example: one of the co-owners is French and the other is American without any establishment in a UPC member state.

Solution: the patent is subject to French law.

A UPC member state and an EPC member state but not UPC

  

List of member states of the EPC but not of the UPC: Albania, Switzerland, Spain, United Kingdom, Croatia, Iceland, Italy, Liechtenstein, Monaco, Northern Macedonia, Norway, Serbia, San Marino, Turkey.

The patent is of the nationality of the co-owner Member State of the UPC.


Example: one of the co-owners is French and the other is British.

Solution: the patent is subject to French law.

A JUB Member State and an EU Member State but not UPC

 

List of EU Member States but not UPC Member States: Croatia, Spain, Italy

The patent is of the nationality of the co-owner Member State of the UPC.

 
Example: one of the co-owners is French and the other is Spanish.

Solution: the patent is subject to french law.

Two Member States outside the UPC The patent is subject to German law.
  • Datum der Veröffentlichung: Mai 2022
  • Nach : Camille PECNARD
  • Tag : Brevet Unitaire
    Europa
  • IP ALERT : IP ALERT LAVOIX
  • Thema(en) : Patente
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