There has been a resurgence of Virgin v Zodiac in IP news recently, owing to a UK Court of Appeal Decision that upheld Mr Justice Floyd’s High Court decision in full (see, for example, Amerikat’s IPKat article here, and an Article in The Lawyer here [with which IPcopy heartily disagrees]).

Virgin v Zodiac was, of course, very important in overturning the Unilin principal relating to awards of damages. However, another important issue was caught up in this case, which is now catching the eyes of IP reporters, and which has some surprising relevance to Unified Patent Court matters: the UK patent that was the subject of this litigation should never have existed, and only came into being as a result of a procedural error made by the EPO’s Examining Division. Specifically, the Examining Division failed to notice that the Applicant had explicitly asked that the UK not be designated when the European application had been filed, and had erroneously given the application a European designation.

IPcopymark has already explained what went down in subsequent UK and EPO proceedings in his recent article, so I won’t cover this ground again. In summary though, wherever Zodiac turned to have this designation error rectified, the decision was batted back to the EPO’s Examining Division – the division that had made the mistake in the first place – who ultimately decided that if it said there was a GB designation on the register, then a GB designation there was, and that was that. There was no procedure for appealing this decision to any other Division or court, and so the UK patent that had resulted from the erroneous designation was to stay put.

‘What the EPO says goes’, seems to be the message. It is clear that, for European patents at least, there can be no revocation on procedural grounds, and there is no route for appealing procedural decisions.

It strikes this IPcopy writer that the designation problem of the Virgin v Zodiac case is a gloomy foreshadowing of the potential mess that could be caused by the Malta problem of the Unitary Patent system (the problem that a European application filed before Malta joined the EPC on 1 March 2007 would not designate Malta, but if matured into a Unitary Patent would have effect in Malta, thereby extending its legal effect).

The EPO will have responsibility for dealing with the procedural aspects of the Unitary Patent, and in particular for maintaining the register of unitary patents, and dealing with the ‘validation’ of unitary patents (i.e. the stage after grant at which an Applicant can select a Unitary Patent, or not). In other words, the EPO will be dealing with procedural matters at the point when the Malta problem will come into play for each pre-Malta patent as it grants.

If the Malta problem is not considered by any of the parties involved in setting up the Unified Patent Court and the Unitary Patent System, and if no decision is made as to whether or not a Unitary Patent will be allowed for a pre-Malta application, this problem will simply be left hanging. The EPO would either need to take the decision itself as to whether or not to allow pre-Malta applications to become unitary patents (and I can’t imagine anyone would be too keen on leaving that decision to the EPO), or to simply ignore the problem in which case pre-Malta applications will be waived through to become Unitary patents, and the protection they offer will be extended to Malta.

All signs from the Virgin vs Zodiac case indicate that, whatever the EPO’s procedural decision on this point, it will be final and unchallengeable.

A plea, then, from IPcopy: please, someone, make a decision on the Malta problem, and ensure a system is in place to implement that decision, so that the final say doesn’t fall into the EPO’s hands while no one is looking!

Emily Weal 13 January 2013