的一些问题。
我们在之前的新闻简报中提到了以下几 点，它们与这些案例研究高度相关。
对单一所有者来说，申请单一专利非常 简单 - 他们会自己申请。共同所有者可 以申请单一专利，但前提是该专利的授 权权利要求在所有 UP 参与国均相同。
如果所有者不止一名，那么他们需要指 定一名共同代表，否则姓名排在首位的 申请人将被视为共同代表。如果其中一 名申请人有义务指定一名专业代表（例 如，因为他们在 EPC 缔约国没有居所或 营业场所），则该专业代表将被视为共 同代表，除非姓名排在首位的申请人已 经指定了一名专业代表。
如果某位所有者只是某一不在 UP 管辖范 围内的 EPC 成员国的所有者，则其不能 申请单一专利或担任共同代表。
对单一所有者来说，如果申请人于提交 申请之日在 UP 参与成员国拥有居所或主 营场所，则该成员国的国家法律适用。
如果申请人在某一参与成员国没有居所 或主营场所，则申请人在提出申请时的 营业场所所在成员国的国家法律适用。
如果这两种情况都不符合，则德国财产 法将适用于
The Unitary Patent and Unified Patents Court – Case Studies
Our August newsletter examined potential issues around ownership and considerations for licensees and licensors relating to the UP and UPC.
This newsletter presents seven case studies illustrating some of those issues.
Background
The following points from our previous newsletter are particularly relevant to these case studies.
For a sole proprietor requesting a unitary patent is fairly simple – they do it themselves. Joint proprietors can request a unitary patent as long as the patent was granted with the same claims for all participating UP states.
If there is more than one proprietor they will need a common representative and if one is not named then the first-named requester will be deemed to be the common representative. If one of the requesters is obliged to appoint a professional representative (e.g. because they have no residence or place of business in an EPC contracting state), that representative is deemed to be the common representative unless the firstnamed requester has appointed a professional representative.
A proprietor who is only a proprietor for an EPC member state that is not covered by the UP cannot request unitary effect or be common representative
For a sole proprietor, if the applicant had their residence or principal place of business in a UP participating member state at the date of filing, the national law of that member state will apply. If the applicant had no residence or principal place of business in a participating member state, the national law of a member state in which the applicant had a place of business at the time of filing the application will apply. If neither condition applies, German property law will apply to the UP. The same rules apply for joint proprietors but the applicants are considered sequentially in the order in which they are listed.
type of court of the first infringement proceedings for a given patent determines the type of court for all subsequent infringement actions (e.g., if the first infringement proceedings for a patent is launched in the UPC, all
因此，申请人 A 可以在单一效力请求中 适当说明其设有营业场所的成员国（法 国、德国、荷兰），该项说明会被记录 在欧洲专利登记簿上，该专利会因而被
subsequent infringement proceedings for the patent must also be brought in the UPC).
The jurisdiction of the UPC can be opted out of but only the true proprietor can validly opt
Applicant A is the sole proprietor for a European patent application, filed in 2020. They are headquartered in the US but has long-established retail outlets in the UK, Germany, France, the Netherlands, and Spain.
Since 2021, Applicant A has had a retail outlet
The European patent application has been allowed with the same claims for all EPC member states, and Applicant A wishes to
As the sole applicant, Applicant A must file a request for unitary effect to obtain a unitary
As they are US headquartered there is no principle place of business in a participating
They have had places of business at the time of filing the European patent application in FR, DR, and NL, which are participating UPC states. ES and GB are not participating UPC states and the applicant did not have their place of business in IT on the filing date.
Therefore, Applicant A can include a suitable indication of the participating member state (FR, DE, NL) in which it had a place of business in the request for unitary effect and this will be recorded on the European patent register, such that the patent will be treated as an object of property under French, German, or Dutch law.
If no indication was included, then by default German national law will apply.
Case 2 – Joint Proprietors
Applicants B and C are joint applicants for a European patent application filed in 2018 in
of
designated states. The European
has been allowed with the same claims for all EPC member states.
B is headquartered in France and has business premises throughout Europe.
申请人 B 的总部位于法国，在整个欧 洲都有营业场所。
申请人 C 的总部位于美国，在欧洲没 有营业场所。
申请人 B 和 申请人 C 希望获得单一 专利。
申请人 C 已指定一名 EPO 专业代 表，代表其申请单一专利。
申请人 B 和 申请人 C 需要共同提出 单一效力请求，以获得单一专利。双 方应指定一名共同代表提出单一效力 请求。否则，申请人 C 指定的 EPO 代表将被视为共同代表。1
因为姓名排在首位的申请人于申请提 交之日在法国拥有居所，所以适用于 UP 的财产法是法国法律。
案例 3 - 共同所有者
申请人 D 和申请人 E 是一项欧洲专 利申请的共同申请人，该申请的权利 要求在所有 EPC 成员国均相同。
申请人 D 是一家研究机构，总部位于 瑞士。申请人 D 仅是瑞士的申请人 和所有者。
申请人 E 的总部位于德国，在整个欧 洲都有营业场所。申请人 E 是所有其 他 EPC 成员国的申请人和所有者。
申请人 D 和申请人 E 希望获得单一 专利，而申请人 D 希望在瑞士获得国 家专利。
单一效力请求必须由申请人 E 提出，
Applicant C is headquartered in the US and has no European presence.
Applicants B and C wish to obtain a unitary patent.
Applicant C has appointed an EPO professional representative to act on its behalf in respect of the unitary patent.
Applicants B and C will need to jointly file a request for unitary effect to obtain a unitary patent. A common representative should be appointed for the request for unitary effect. If this is not done, the EPO representative appointed by Applicant C will be deemed to be the common representative1.
The law of property applicable to the UP will be French law because the first-named applicant had its residence in France on the filing date of the application.
Case 3 – Joint Proprietors
Applicants D and E are joint applicants for a European patent application that has been allowed with the same claims for all EPC member states.
Applicant D is a research institution headquartered in Switzerland. Applicant D is the applicant and proprietor for Switzerland only.
Applicant E is headquartered in Germany and has business premises throughout Europe. Applicant E is the applicant and proprietor for all other EPC member states.
Applicants D and E wish to obtain a unitary patent, and Applicant D wishes to obtain a national patent in Switzerland.
The request for unitary effect will have to be filed by Applicant E because Applicant D is the proprietor only for Switzerland (which is not a participating EPC state). But, Applicant D can obtain a national validation in Switzerland for which it will be the proprietor.
The applicable law of property for the UP will be
law because German-headquartered applicant E is the sole proprietor of the UP.
it
obliged to appoint
C
申请人 F 和申请人 G 是 2018 年在所 有指定国家提交的欧洲专利申请的共 同申请人，该申请的权利要求在所有 EPC 成员国均相同。
申请人 F 是所有 EPC 成员国（意大利 除外）的申请人和所有者，申请人 G 是意大利的申请人和所有者。
申请人 F 的总部目前位于澳大利亚， 申请人 G 的总部位于中国。
自 2019 年以来，申请人 F 在整个欧洲 都设立了营业场所，但 2019 年之前只 在澳大利亚和亚洲设有营业场所。
申请人 G 自 2015 年以来在意大利和 亚洲都设有营业场所，但由于各种问 题，2020 年，其不得不关闭了所有的 意大利营业场所，自那以后，其只在 亚洲拥有营业场所。
两名申请人都指定了一名代表负责专 利申请的审查，其中，申请人 G 的代 表被指定为共同代表。
申请人 F 和申请人 G 需要共同提出单 一效力请求，以获得单一专利。尽管 两名申请人都有负责申请审查的 EPO 共同代表，但仍应指定一名共同代表 提出单一效力请求，且该代表可以 不是之前指定的代表。否则，无论姓 名排在首位的是申请人 F 还是申请人 G，其都将被视为共同代表。
Case 4 – Joint Proprietors
Applicants F and G are joint applicants for a European patent application which was filed in 2018 in respect of all designated states and which has been allowed with the same claims for all EPC member states.
Applicant F is the applicant and proprietor for all EPC member states except Italy, where Applicant G is the applicant and proprietor.
Applicant F is currently headquartered in Australia and Applicant G is headquartered in China.
Since 2019, Applicant F has business premises throughout Europe but prior to 2019 only had business premises in Australia and Asia.
Applicant G had business premises in Italy and Asia since 2015 but due to various issues had to close all of their Italian premises in 2020, and since then they have only had business premises in Asia.
Both Applicants appointed a representative for the prosecution of the patent application, with Applicant G’s representative being appointed the common representative.
Applicants F and G will need to jointly file a request for unitary effect to obtain a unitary patent. Despite both applicants having common representatives before the EPO for the application’s prosecution, a common representative should still be appointed for the request for unitary effect and this representative may be different to the previously-appointed representatives. If this is not done, whichever one of Applicants F and G is the first-named requester will be deemed to be the common representative.
The law of property applicable to the UP could be Italian law2 because neither applicant has their place of business in a UPC state at the time of filing and, despite its current lack of business premises in Italy, the Applicant G had a place of business in Italy on the filing date of the application (whilst Applicant F is currently commercially active throughout Europe this was not the case on the filing date).
申请人 H 仅是瑞典、芬兰、挪威和丹 麦的申请人和所有者，申请人 J 是所有 其他 EPC 成员国的申请人和所有者。
申请人 H 的总部目前位于瑞典，在瑞 典、芬兰、挪威和丹麦都设有营业场 所。
申请人 J 的总部位于中国，并在德国、 法国和意大利对专利进行了商业化。他 们在这些国家都有营业场所，这些营业 场所都是在欧洲专利申请提交后开设 的。在提交欧洲专利申请时，申请人 J 在欧洲没有营业场所。
申请最初以申请人 J 和申请人 K 的名义 共同提交。
申请人 K 是申请人 H 的商业伙伴，他 们的总部一直设在瑞士，并且在瑞士和 意大利一直有营业场所。申请人 K 向申 请人 H 转让申请是双方在申请提交后 不久达成的商业协议的一部分。
在此情形下，申请人 H 和申请人 J（作 为目前的申请人）需要共同提出单一效 力请求。
适用法律可能会是意大利法律（如果指
Case 5 – Joint Proprietors with Assignment
Applicants H and J are joint applicants for a European patent application which was filed in 2019 in respect of all designated states and which has been allowed with the same claims for all EPC member states.
Applicant H is the applicant and proprietor for Sweden, Finland, Norway, and Denmark only and Applicant J is the applicant and proprietor for all other EPC member states.
Applicant H is currently headquartered in Sweden and has business premises in Sweden, Finland, Norway, and Denmark.
Applicant J is headquartered in China and commercialises the patent in Germany, France, and Italy. They have business premises in those countries which were all opened after the European patent application was filed. At the time of filing the European patent application Applicant J did not have business premises in Europe.
The application was originally filed jointly in the names of Applicants J and K.
Applicant K is a business partner of Applicant H. They have always been headquartered in Switzerland and have always had business premises in Switzerland and Italy. The assignment of the application from Applicant K to Applicant H was part of a commercial agreement that concluded shortly after the application was filed.
The situation here is that Applicants H and J (as the current applicants) will need to jointly file the request for unitary effect.
The applicable law could be that of Italy (if indicated). This is because the applicants on filing were J and K. Applicant J did not have a residence or place of business in Europe at the time the application was filed, but Applicant K did – in Italy.
Therefore, according to the relevant Regulation, as neither of the original applicants were headquartered in a UPC state, but one of the original applicants (Applicant K) had its business premises in Italy on filing, this means that the applicable law for the UP could be that of Italy, which in this example could be seen to favour Applicant J which is commercially active
当然，申请人需要指明意大利，否则默 认德国财产法适用，但该案例仍表明原 始申请人会如何影响 UP 的最终适用法 律。
案例 6 – 无效退出选择
申请人 L 提交了一份欧洲专利申请，该 申请随后被转让给了申请人 M。其一直 打算备案本次转让信息，并在 EP 登记 簿上准确记录本次转让，但由于某种原 因，并未办理。
申请人 L 决定让其整个专利组合批量 退出 UPC 体系，并在日出期开始时立 即提出了申请。由于记录有误，转让给 申请人 M 的欧洲专利申请出现在选择 退出清单上，所以申请人 L 将转让给申 请人 M 的欧洲专利申请退出了 UPC 体 系。
因为法院体系未经检验，所以申请人 M 不喜欢 UPC 体系。当他们的申请获得 授权时，他们会在其重要司法管辖区（ 德国、意大利、法国、英国、西班牙和 荷兰）内为其所有专利办理生效程序。 申请人 M 打算退出 UPC 体系，但还未 退出，因为其计划在过渡期内其专利组 合审查完成时，进行批量退出（像申请 人 L 一样）。
在过渡期的第 1 天（即 UPC 的第 1 天） ，申请人 M 的一个竞争对手针对申请 人 M 的一个国家生效程序在 UPC 提起 了无效诉讼，声称选择退出无效，因为 选择退出申非由真正的所有者提出。
在这种情况下，由于选择退出无效， 不符合申请人 M 的期望，我们期望上
in Italy, over Applicant H which isn’t. Of course, if Italy was indicated, German property law will apply be default, but this example still shows how the original applicant could affect the ultimate law applicable to a UP.
Case 6 – Invalid Opt Out
Applicant L filed a European patent application which was subsequently assigned to Applicant M. It was always intended to record the assignment so that the details on the EP register were correct but, for whatever reason, this was not done.
Applicant L decides to bulk opt its entire portfolio out of the UPC system and promptly does so at the beginning of the sunrise period. Due to a record-keeping error the European patent application assigned to Applicant M is on their list, so Applicant L opts the European patent application that was assigned to Applicant M out of the UPC system.
Applicant M is not a fan of the UPC system due to the court system being untested. When their application grants, they validate it in DE, IT, FR, UK, ES, and NL, all of which are important jurisdictions for them. Applicant M intends to opt out of the UPC system but hasn’t yet done so, as they plan to do a bulk opt out (like Applicant L) sometime during the transition period once they have completed an audit of their portfolio.
On day 1 of the transitional period (i.e., day 1 of the UPC), one of Applicant M’s competitors files an invalidity action to one of their national validations at the UPC, alleging that the opt out was invalid as it was not filed by the true proprietor.
In this case, we would expect this revocation action to “lock” all national validations into the UPC system since the opt out was invalid, contrary to what Applicant M wanted.
Case 7 – Multiple Licensees
A patentee owns a European patent effective in Germany, Portugal, Italy and France. It has exclusively licensed it to one licensee in Germany and a different licensee in Portugal, Italy and France.
The German licensee wants to enforce the patent against an infringer, in Germany. It does not want to use the UPC because it is happy
UPC 对三个司法管辖区的多个 侵权者执行专利会更便宜。该被许可方 并不担心集中撤回，因为它在非 UPC 司法管辖区赚取的利润比在法国、葡萄 牙和意大利要多。它在这些司法管辖区 的花费越少越好。
除非欧洲专利被选择退出，否则潜在的 侵权者可对该专利组合提出 UPC 集中 撤回诉讼，并让该专利组合在所有四个 司法管辖区同时撤回。这对德国被许可 方来说是个坏消息。
因此，执行范围（和预期）与撤回范围
with the German National Courts, has litigated there in the past and doesn’t want to enter an unknown litigation forum. It makes significant sales of the licensed technology in Germany, so this is an important patent.
The other licensee wants to be in the UPC system because it will be cheaper to enforce the patents in the UPC against multiple infringers in all three jurisdictions. It is not concerned about central revocation because the margin its makes in non-UPC territories is more than France, Portugal and Italy. The less it can spend in those jurisdictions, the better.
Unless the European patent is opted out, a potential infringer can file a central UPC revocation action against the suite of patents, and have it revoked in all four jurisdictions at once. This is bad news for the German licensee.
there is a mismatch between the scope (and
of enforcement on the one hand and the scope (and associated risk) of revocation on the other.
Wants to enforce using the UPC to avoid multiple actions in the French, Portuguese and Italian Courts
希望利用 UPC 执行专利，避免在法国、 葡萄牙和意大利法院提起多项诉讼
should form an opinion on
or not
out.
need to be carefully considered before making that decision such as:
number of issues
The position of each licensee. The patentee will want to consult with them beforehand to agree on a common position.
This will include agreeing who is responsible for paying to opt the patent out of the UPC system (that might be the German licensee).
3. 一旦在国家法院提起诉讼，该专 利就不能重新加入 UPC 体系。
4. 如果德国被许可方希望在德国执行 该专利，那么该专利就不能被重新 加入 UPC 体系。
5. 如果意大利、葡萄牙和法国的被许 可方（希望利使用 UPC）随后需要 在多个司法管辖区执行该专利，谁 来承担这些费用？被许可方可能不 愿意承担，因为他们想要在 UPC 进 行更便宜的诉讼。
当然，最保险的做法是，在 UPC 体系 启动前的三个月日出期内选择退出， 否则专利将面临被集中撤回的风险。
专利的登记所有者或申请人可以选择 退出 UPC 体系，因此决定权最终可能 落在专利权人而非被许可方身上。
这些案例研究还表明，如果您是被许 可方，并且偏好某一种专利退出和执 行方式，您应及时与您的许可方联 系，与其达成一个共同的立场，并确 保及时提交任何期望的选择退出或选 择加入请求。
HLK 非常乐意协助您制定新的条款或 修订现有协议，或者就可能出现的任 何（实际或潜在）所有权或许可问题 为您提供建议。如需帮助，请随时与 我们联系。
3. Once litigation has been initiated in the national Courts the patent cannot be opted back in to the UPC system.
4. If the German licensee is going to enforce the patent in Germany, the patent cant be opted back in.
5. If the licensee in IT, PT and FR (who wanted to use the UPC) subsequently needs to enforce the patent, in multiple jurisdictions – who will cover those costs? The licensee may be unwilling to do so on the basis that it was in favour of cheaper litigation in the UPC.
Of course, the safest route to opt-out will be within the three-month sunrise period prior to the start of the UPC, otherwise the patents are at risk of central revocation.
The registered proprietor or applicant of the patent can opt out of the UPC system so the decision may ultimately come down to the patentee rather than the licensee.
These case studies also show that if you are a licensee, and have a preference one way or the other regarding opting out and enforcement, you should contact your licensor in time to find a common position and to ensure that any desired opt-out or opt-in requests are duly filed.
HLK would be delighted to assist you in relation to the drawing up of new provisions or amendment of existing arrangements, or advising on any issues (real or potential) that could arise regarding ownership or licensing. If this assistance is of interested please do not hesitate to get in touch with us.