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You may have noticed that over here at IPCopy, we’ve been playing with the Unitary Patent Regulation, and testing it to its limits. We’ve already noted some quirks, including the fact that a patentee could potentially opt out of the unified patent court until 2047, and that if an infringement action is brought by an exclusive licensee, bifurcation is all but forced on the defendant.
But this is perhaps the one that’s baked IPCopy’s collective noodle the most so far: assuming that ratification (of the unified patent court agreement) proceeds in time for the Unitary Patent Regulation to come into force 1 January 2014, it appears to us that around one third of the patents that grant that year, and potentially even as many as half, will not actually be eligible for unitary patent protection*.
“How can this be?” I hear you cry! Well it’s all Malta’s “fault”, and here’s why… [we cannot help but think we’ve missed something in the analysis below so feel free to chip in with your thoughts in the comments section!]
Malta was a late-comer to the EPC, and joined on 1 March 2007 [earlier versions of this post incorrectly stated 1 July 2007. Thanks to @Tuftythecat for the heads up!]. This means that if you have a European patent application that was filed before 1 March 2007, Malta will not be included in your designated states by virtue of Article 79 (1) EPC. Your patent therefore has no legal effect in Malta, and will not grant in respect of that country (Article 2(2) EPC and Article 64(1) EPC).
At the moment, the implication of this is simply that validation is not available to you in Malta. Something to be aware of, but perhaps not a terribly significant revelation.
However, things begin to look more complex when we consider what happens if you want a unitary patent. Assume, for a moment, that Malta ratifies the unified patent court agreement (the “Agreement”) and is a Member State of the unitary patent at the time your patent grants. If your patent becomes a unitary patent, it would give you patent protection in Malta, a country that was never designated.
This is rather a fundamental problem – your European patent application gave you no legal rights in Malta, so a unitary patent can’t give you Malta for free.
Does the Regulation itself shed any light on this situation?
Well, Article 3(1) of the Regulation states that:
“A European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States provided that its unitary effect has been registered in the Register for unitary patent protection.
A European patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect.”
Your European patent has not granted at all in Malta. So, your European patent does not have the same claims in respect of all Member States, and hence, according to Article 3(1), cannot benefit from unitary effect. Therefore, the unitary patent is automatically closed to you, and your only option for obtaining protection is the validation route.
This seems absurd: on the face of it, assuming that Malta ratifies the Agreement in a timely fashion, it would appear that no European patent application filed before 1 March 2007 could be eligible to become a unitary patent.
So how significant is this? A patent granted in 2014 would need to be granted more than six and a half years after its filing date to fall into this trap. Fortunately, this blog post has some handy statistics. Of the European patents granted in 2011 (a total of around 60 000 patents), approximately 25 000 of those were granted more than 6 years from the filing date.
At a crude estimate then, around a third of the patents that grant in 2014 will not be eligible for unitary protection.
Ouch.
And the picture is about to get more complicated…
As already noted in ipcopyben’s post here, Croatia is set to join the EU on 1 July 2013.
Croatia only joined the EPC as recently as 1 January 2008, having been an extension state from 1 April 2004. Once it becomes an EU member, Croatia will also be able to opt in to the unitary patent package. So, if Croatia ratifies the Agreement, this same problem will apply, except now the cut-off date will be 1 January 2008**, and our figure of a third of patents being ineligible looks more like a half!
Other recent EPC-joiners that aren’t yet EU members are Norway (EPC since 1 January 2008), Albania (EPC since 1 May 2010), Macedonia (EPC since 1 January 2009), Serbia (EPC since 1 October 2010), and San Marino (EPC since 1 July 2009). Any of these joining the EU in the near future, and becoming Member States of the unitary patent, would shift the cut-off date even closer.
The most extreme scenario would be if a country were to join the EPC (one of the current extension states, for example), and then join the EU and become a Member State of the unitary patent.
And we haven’t even got started yet on what would happen if a country were to leave the EU when the unitary patent is in force!
Can you see a way out of this conundrum? IPcopy welcomes your thoughts…
Emily Weal and Mark Richardson
* Ball-park figures only!
** Unless you had the foresight back then to elect Croatia as an extension state.
IPcopy 
The EPO says that Malta joined on 1 March 2007, not 1 July 2007 as you state. Otherwise, it looks like you’re right, although I don’t think there will be very many applications with a filing date before 1 March 2007 that are still pending when the unitary patent comes into force (if it ever does).
Really? You indicate that in 2014 [taking the earliest possible accession date] there will be few applications with a filing date prior to 1st March 2007. At present there are more than 60,000 applications pending with a filing date more than 7 years old and over 100,000 with filing dates before Malta’s accession.
If this disastrous tandem starts pedalling there will be plenty of applications that will not be able to hitch a ride, even discounting other countries such as Croatia and Macedonia..
Also, you need to consider the identity of EU candidate countries. These include Montenegro which is not even an EPC member yet. Their joining EU and EPC could drastically restrict the scope of a unitary patent.
Although such accession issues have been dealt with previously for CTMs, the unitary patent is not a community wide instrument and dealing with new accessions presents a knotty problem.
Adding the gloss to Article 3(1) of EU1257/2012
“Unitary effect of a European patent can only be requested where the European patent is granted in respect of all the participating Member States”
that this refers to the time of filing, appears a heroic extension of the regulation since the regulation appears to have no transitional provisions other than noting that the Commission shall regularly update the list of participating states [Article 18(3)].
Basically, the unitary patent is stuffed unless the EU ceases to accrete new members. Personally, I am happier with the unitary patent being stuffed than with the EU ceasing to extend Pax Romana.
Oops. Thanks for heads up on the date. I’ve corrected the post with the new date and an acknowledgement.
I agree that the speed of ratification may well reduce the impact of this issue (assuming we’re correct!) and it will correct over time. However, it seems like an odd quirk in the regulation.
I shall argue that Malta is not a ‘participating state’ in the context of applications filed before it joined the European Patent Convention. I shall rely on the intention of the legislators, on the maxim ut magis valeat quam pereat and on waving my hands furiously.
I do not see how protection could be extended to Malta (or any other non-designated state). If I have legitimately reviewed the possible protection afforded by a patent application and set up a manufacturing facility in a state for which no patent protection can be obtained, it would be unjust for this facility to subsequently become illegal through a retrospective piece of legislation.
I see your point, and sympathise. But injustice is not always justiciable. Should an actual (rather than a theoretical) case arise, it may be that the matter could be dealt with by prior user rights. Under Art 28 UCA, it’s a matter of national law. If Malta doesn’t already have prior user rights, it might legislate to provide them.