Licence of right

A licence of right is the regime under which a patent proprietor publicly declares that it will allow any person to use the invention as a licensee in return for appropriate consideration, in exchange for a reduction in renewal fees. For the unitary patent, it is provided for by Article 8 of Regulation (EU) No 1257/2012. The mechanism also exists in several national laws, notably in Germany and the United Kingdom, where it is known as the licence of right.

The statement for the unitary patent

The proprietor of a unitary patent may file with the European Patent Office a statement that it is prepared to allow any person to use the invention as a licensee in return for appropriate consideration. The statement is entered in the Register for unitary patent protection and entitles the proprietor to a reduction in renewal fees, set at 15%. It cannot be filed where an exclusive licence is recorded in the Register, and it may be withdrawn as long as no third party has informed the proprietor of its intention to use the invention.

Effects on third parties

The statement does not in itself constitute a licence. A third party wishing to use the invention must notify the proprietor, and the licence arises from agreement on its terms or, failing that, from the setting of the consideration. Actions concerning compensation for licences based on Article 8 of the Regulation fall within the exclusive jurisdiction of the Unified Patent Court (UPC), under Article 32 of the UPC Agreement. In practice, the statement limits the reach of an injunction sought against a third party who offers to pay appropriate consideration.

Position under French law

The licence of right is distinct from the non-voluntary licences of French law, namely the compulsory licence for non-working and the ex officio licences in the interest of public health, national defence or the economy, which are imposed on the proprietor. It is, on the other hand, close to the FRAND licensing commitment given by the holder of a standard essential patent, which likewise opens access to a licence to any interested party, on a legal basis that remains debated.

Key points

The licence of right trades a fee reduction for opening the invention to any user willing to pay appropriate consideration. For the unitary patent, the reduction is 15% of renewal fees, and disputes over consideration fall within the jurisdiction of the UPC. The statement should be reserved for patents that the proprietor does not intend to exploit exclusively, and the absence of any exclusive licence, as well as existing contractual commitments, should be checked beforehand.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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