The aim of the wise is not to secure pleasure, but to avoid pain
Aristotle 

Although the Unified Patent Court (UPC) has not yet commenced, the IP team at Gide is familiar with the rules and principles, which will govern the future Court and is pleased to share some thoughts and insights below.

The Agreement on a Unified Patent Court (AUPC) provides certain rules about which persons are entitled to sue for patent infringement and under what conditions (Article 47).

These rules are different from those which might otherwise apply in certain jurisdictions and steps have recently been taken (e.g. in France) to bring the national law into accordance with the AUPC from the date of its entry into force.

For example, current French law provides that, apart from the patent owner, only an exclusive licensee is entitled to bring patent infringement proceedings before French Courts and further provides that this is only the case if: i) the license does not stipulate otherwise, and ii) the owner of the patent, after formal notice, does not itself bring such action. On the other hand, a non-exclusive licensee is not entitled to take such action, even if the patent owner was to consent to it.

The AUPC conditions for admissibility of an action brought by the exclusive licensee are slightly different to current French law as regards the second condition. Indeed, the AUPC requires only that the exclusive licensee need give prior notice to the patentee. There is no requirement that the patentee has to have failed itself to bring an action after such notice. Therefore, the exclusive licensee needs only to inform the patentee before bringing its infringement action and does not have to wait to see what the patentee will or will not do. Of course, it is possible that the patent owner may wish to be joined (per Article 47(4) of the AUPC) or, subject to the license agreement, to control such proceedings.

A somewhat bigger difference of the AUPC compared with French current law is that the AUPC allows for the non-exclusive licensee to bring infringement proceedings on its own, although the conditions for this entitlement are not the same as for exclusive licensees. Most importantly, this entitlement must be expressly permitted by the license agreement. In such circumstances, the non-exclusive licensee is also required to give the patent owner prior notice (per Article 47(3) of the AUPC).

Recent amending legislation in France (Ordonnance No. 2018-341 dated 9 May 2018) seeks to mirror the rules of the AUPC in French law but will only take effect from the date of its entry into force. Particularly, its Article 11 amends article L.615-2 of the French IP Code as follows:

• paragraph two of future article L.615-2 of the French IP Code will require only that the exclusive licensee need give prior notice to the patentee of an action. There will be no requirement that the patentee has to have failed itself to bring an infringement action after such notice. Joinder by the patent owner will also be possible under paragraph five of future article L.615-2 of the French IP Code.
   
• likewise, paragraph three of future article L.615-2 of the French IP Code will provide the possibility for the non-exclusive licensee to bring infringement proceedings on its own under the same conditions as the AUPC.

Thus, French law will reflect the AUPC as at its date of entry into force. This will avoid discrepancies between the two systems, particularly in view of the option for litigants to litigate either before the UPC or a national Court during the transition period.

In drafting or amending license agreements it will be necessary to consider what rights should be granted to licensees, taking into account the changes in French law as from the entry into force of the AUPC and bearing in mind the need for express terms to displace an exclusive licensee or to include a non-inclusive licensee. .

The IP team at Gide is on hand to help you. Please do not hesitate to get in touch with us.

By Daniel Byrne and Julie Pailhès

This Client Alert is not intended to constitute legal advice and should not be taken as a recommendation to take action or withhold from taking action.