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The EPO’s Draft Rules relating to Unitary Patent Protection

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EU flagIPcopy commentator Antonio Pizzoli has pointed us in the direction of the EPO’s draft rules relating to the Unitary Patent Regulation which you can find here (thanks Antonio!). IPcopy hadn’t come across this document before, and it makes for an interesting, if slightly worrying, read.

Clearly it is a work in progress, and the draft is peppered with interesting comments and alternative proposals.

IPcopy noted the following areas of particular interest:

  • Rule 4 – Request for unitary effect – There is some debate over how the EPO will go about managing “substantive” requirements for obtaining unitary effect: specifically, determining whether a patent fulfils the requirement of being granted with the same set of claims for all states. As yet, it is undecided if “all states” will mean all 25 states that are party to the Unitary Patent Regulation, or only states that have ratified the UPC Agreement. It is also undecided whether the key date on which the requirement is assessed should be the date of grant of the patent or the date of request for unitary effect.
  • Rule 4 – The rules note that there is no provision for a fee for requesting unitary effect, and the commentary suggests that introducing such a fee would be burdensome and undesirable. All signs therefore point to there being no fees for requesting a unitary patent, and hence no fee that is equivalent to the national ‘validation’ fee.
  • Rule 5 – Requirements for the Request – There may be an option to make a preliminary request for unitary effect in response to the 71(3) Communication.
  • Rule 5 – Further Processing will be available in respect of the deadline for requesting unitary effect: there will be a time limit of two-months from expiry of the deadline for requesting such Further Processing.
  • Rule 9 – Payment of Renewal Fees – We were hoping for some juicy stuff here… we were disappointed.
  • Rule 10 – Surrender – National Law will govern whether a patent proprietor is obliged to notify licensees before surrendering a unitary patent.
  • Rule 21 – Interlocutory Revision – This struck us as a particularly interesting rule, so we will reproduce it in full:

If the European Patent Office is informed by the Unified Patent Court that an action against an application to annul or alter a decision of the European Patent Office is admissible and if it considers that the application is well founded, it shall within three months of the date of receipt of the application

(a) rectify the contested decision in accordance with the order or remedy sought by the claimant and

(b) inform the Unified Patent Court and the claimant that the decision has been rectified.

Notes:

(1) Proposed Rule 21 is largely modelled on Article 109 EPC and goes hand in hand with Rule 91 of the draft Rules of procedure of the Unified Patent Court (29 April 2013 – draft 15).

(2) In the framework of the implementation, an EPO internal procedure will be established (e.g. internal Guidelines) which will ensure that in cases where an adverse decision is likely to be issued (e.g. rejection of a request) or where the case involves complex legal questions, a lawyer is involved before the issuance of the decision. This would guarantee that EPO decisions against which an action can be brought before the UPC are legally sound.

[Updated text] Our initial thought was that this rule when read alone gives the impression that there is an intention that the UPC will be able to overturn any decision of the European Patent Office – something that seemed to us to be at odds with the jurisdiction of the UPC in the Agreement. IPAlchemist pointed out below that Article 32 of the Agreement does give the UP jurisdiction to hear Actions regarding EPO decisions relating to the powers delegated to the EPO by Article 9 of the Unitary Patent Regulation, so in this context the UPC can overturn EPO decisions relating, amongst other things, to requests for unitary effect. [/updated text]

Notable absences from these Draft Rules are any provisions to deal with the Malta problem, and (as highlighted by commentators in ipcopymark’s earlier post regarding Italy and the UPC) any provisions for dealing with a clash between a request for unitary protection and an earlier-filed opt-out request.

Let us know below if anything else has caught your eye!

Emily Weal 13 February 2014


7 Comments

  1. ipalchemist says:

    The blogpost states “The UPC is not explicitly given the jurisdiction to hear actions for annulling or altering a decision of the EPO”.

    Article 32(1)(i) of the UPC agreement lists one of the exclusive competences of the UPC:

    “actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regu­lation (EU) No 1257/2012″

    I think that this is explicit. This is one of the few areas that I am not worried about!

    • ipcopyemily says:

      Quite right – on first reading, and out of context, I had taken it as referring essentially to all EPO decisions (!), but against the background of Article 32 it makes perfect sense. I’m so used to finding holes that I overlooked one that has already been patched up!

      • ipcopy says:

        The above post has now been updated to reflect IPAlchemist’s comment.

        New text above:

        Our initial thought was that this rule when read alone gives the impression that there is an intention that the UPC will be able to overturn any decision of the European Patent Office – something that seemed to us to be at odds with the jurisdiction of the UPC in the Agreement. IPAlchemist pointed out below that Article 32 of the Agreement does give the UP jurisdiction to hear Actions regarding EPO decisions relating to the powers delegated to the EPO by Article 9 of the Unitary Patent Regulation, so in this context the UPC can overturn EPO decisions relating, amongst other things, to requests for unitary effect.

        Original text (replaced by above paragraph):

        From this Rule it seems that there is an intention that the UPC will be able to overturn decisions of the European Patent Office (for IPcopy’s view on why this matters, see our post here for our concerns on the lack of appealability of certain EPO decisions). Are we reassured by this? The UPC is not explicitly given the jurisdiction to hear actions for annulling or altering a decision of the EPO, so we are not convinced that this provision can really provide comfort. We would be interested to hear readers’ thoughts on this.

  2. Jim says:

    The rules you point to are dated last August.

    There has been substantial change since and the rules are still in discussion.

    This is definitely a moving target.

    • ipcopy says:

      Yes, last August! I’m sure there has been substantial change since then and we would be very interested to see a more recent version. Are you aware of any other versions online?

      We hadn’t seen this August version before though. We must have been looking the other way at the time! As soon as we see a newer version we will post an update.

  3. Antonio Pizzoli says:

    Here you can find a further version:

    http://www.preubohlig.de/deutsch/eu-patent/R1to11revesc1322.pdf

    (you have to thank Google, not me)

  4. Rudolf Teschemacher says:

    Your comment on Rule 5:
    If the time limit for filing the request for unitary protection is missed, further processing will not be available. The proprietor can only file a request for re-establishment of rights, see Rule 19 of the draft.

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