Article 47

Parties

1.   The patent proprietor shall be entitled to bring actions before the Court.

2.   Unless the licensing agreement provides otherwise, the holder of an exclusive licence in respect of a patent shall be entitled to bring actions before the Court under the same circumstances as the patent proprietor, provided that the patent proprietor is given prior notice.

3.   The holder of a non-exclusive licence shall not be entitled to bring actions before the Court, unless the patent proprietor is given prior notice and in so far as expressly permitted by the licence agreement.

4.   In actions brought by a licence holder, the patent proprietor shall be entitled to join the action before the Court.

5.   The validity of a patent cannot be contested in an action for infringement brought by the holder of a licence where the patent proprietor does not take part in the proceedings. The party in an action for infringement wanting to contest the validity of a patent shall have to bring actions against the patent proprietor.

6.   Any other natural or legal person, or any body entitled to bring actions in accordance with its national law, who is concerned by a patent, may bring actions in accordance with the Rules of Procedure.

7.   Any natural or legal person, or any body entitled to bring actions in accordance with its national law and who is affected by a decision of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012 is entitled to bring actions under Article 32(1)(i).

Case Law

Court of Appeal

IPPT20240226, UPC CoA, Nanostring v 10x Genomics II

Applicants 2 are entitled to file the application for provisional measures. Due to their corresponding entry in the Register for Unitary Patent Protection, Applicants 2 are to be treated as the proprietor of the patent at issue (Rule 8(4) RoP, Article 47(1) UPCA. According to the findings of the Court of First Instance, which are not contested in the Appeal, Applicant 1 is in any case entitled to file an application as the holder of a non-exclusive licence granted to it by Applicants 2 under Art. 47(3) UPCA. 

IPPT20240208, UPC CoA, Ocado v Autostore
Public access to register requires representation (Rule 8 RoP, Rule 262 RoP, Article 47 UPCA, Article 48 UPCA). ‘Parties’ requiring representation pursuant to Rule 8(1) RoP encompasses also (i) a third party affected by an order or decision such as a third party under Rule 190 RoP and (ii) a member of the public under Rule 262.1(b) RoP. Opt-out applicants are expressly exempted in Rule 5(4) RoP..Members of the public requesting access to the register pursuant to Rule 262 RoP are in an adversarial situation where representation is called for.

Court of First Instance

IPPT20240409, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports
Provisional measures do not require risk taking by applicant but reliable knowledge of relevant facts (Article 47 UPCA, Article 62 UPCA, Rule 213 RoP). The applicant only needs to call upon the court if he has reliable knowledge of all the facts that make legal action in the proceedings for an order for provisional measures promising and if he can make these facts credible: that the applicant is entitled to initiate the proceedings, that the patent in question is valid and that its right is infringed or threatened to be infringed.