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

IPPT20251210, UPC CFI, LD Dusseldorf, MAS Maschinen v Altech
Standing to sue of exclusive licensee (Article 47(2) UPCA). Doubtful whether a finding of a transfer of claims for the past by the patentee to the holder of an exclusive license is necessary as Article 47(2) UPCA states that the holder of an exclusive licence is entitled “to bring actions […] under the same circumstances as the patent proprietor”. In any event, such a transfer has taken place. 

IPPT20251127, UPC CFI, CD Milan, Pai Pharma v Philips
Standing to sue for revocation action – a competitor is “concerned by a patent” (Article 47(6) UPCA). Any party (potentially) operating in the technical field of the patent are “concerned” by a patent. The legal certainty aimed at by allowing a standalone revocation action is especially important for competitors of the patentee who may want to make sure they have “freedom to operate” in a certain field and therefore safety with regard to developments and investments.

IPPT20250829, UPC LD The Hague, Cilag v RiVOLUTION
Applicant has standing to sue  (Article 47 UPCA). Pursuant to R. 8.4 RoP, the person shown in the Register for unitary patent protection as the proprietor of the patent shall be treated as such. Contrary to what is explicitly mentioned for bundle patents (in R. 8.5 (c) RoP), this is not said to be a rebuttable presumption.

IPPT20250731, UPC CFI, RD Nordic-Baltic, Texport v Sioen
Standing of TEXPORT as (unregistered) exclusive licensee (Article 47.2 UPCA). The Court notes that TEXPORT has submitted a document dated 9 January 2024, i.e. three days before its Statement of Claim was filed, where the patent proprietor – who also is managing director/CEO of TEXPORT – confirms that TEXPORT is the exclusive licensee of the Patent and that TEXPORT is entitled to bring actions before any Court, especially the UPC, under the same circumstances as him, the patent proprietor. Liability for damages of (unregistered) exclusive licensee (Article 68 UPCA). SIOEN was fully aware of the existence of the Patent and has acted culpably. It is […] in this context irrelevant that TEXPORT is not registered as an exclusive licensee in the national patent registers. 

IPPT20250616, UPC CFI, LD Hamburg, Steros v Otec
Standing to sue exclusive licensee (Article 47(2) UPCA). Given the Applicant's aim of obtaining unrestricted freedom to operate, there can be no reasonable doubt that patents registered after the agreement was concluded are also to be licensed. Insofar as the Defendant raises doubts about the incorporation of future property rights, these appear to be unfounded. The patent proprietor, which belongs to the same group of companies as the Applicant, is aware of the present proceedings. It can be assumed that the patent proprietor would have raised objections to the Applicant's present application if the Applicant had not been entitled to assert it before this Court. This should make it clear that the Applicant is also licensed to use the patent in suit. 

IPPT20250513, UPC CFI, LD Düsseldorf, Sanofi v Amgen

Both claimants have standing to sue as respectively patent proprietor and exclusive licensee (Article 47 UPCA). 

IPPT20241220, UPC CFI, LD Mannheim, Pohl-Boskamp v pharma-aktiva
Preliminary injunction and provisional measures granted (article 62 UPCA). The rebuttable presumption of being the patent proprietor not rebutted by obvious clerical error (Article 47 UPCA, R. 8.5(c) RoP): the letter ‘o’ was omitted in the legal form suffix ‘GmbH & Co. KG’ of the applicant in the information contained in the application. 

IPPT20241031, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Strong rebuttable presumption that the registered patent proprietor is the material patent proprietor entitled to bring actions (Article 47(1) UPCA, Article 138(1)(e) EPC). In PI proceedings – in which only a “sufficient degree of certainty that the applicant is entitled to commence proceedings pursuant to article 47 UPCA” is required (R. 211(2) RoP) – this presumption can only be rebutted if the title is manifestly erroneous. At least not more likely than not that the patent is invalid on the basis of Article 138(1)(e) EPC: Defendants never challenged Valeo’s entitlement to the patent before filing the Application for provisional measures and the infringement action. 

IPPT20240430, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Rebuttable presumption that a person registered as the patent proprietor in the respective national register is entitled to be registered (Rule 8.5(c) RoP, Rule 211.2 RoP, Article 47 UPCA,). 

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.