Last week Emily took a look at the EPO’s draft rules relating to Unitary Patent Protection. As noted in last week’s post the document appeared to be a work in progress (it was dated August 2013) and in the comments section to that post Antonio Pizzoli (Googling Wizard, First Class) pointed us at an updated version of the EPO’s draft rules which can be accessed here.

The August draft ran to 22 rules. The updated version only discusses draft rules 1 to 11. Furthermore, we note that the updated version introduces a new rule 4 meaning that there are some numbering changes.

We’ve had a quick look at the updated document and note that there has been some progress on some of the issues raised in Emily’s review. The following areas in particular interested us:

New Rule 4 – Unitary Patent Protection Division. This division, which is referred to as a “virtual division” in Note 5 to rule 4, is to be established to carry out the tasks referred to in Article 9, paragraph 1, Regulation (EU) No 1257/2012. Note 5 suggests that no additional staff will be required for the UPP Division but will comprise existing staff in the Legal Division who will get to wear “two hats”.

Rule 5 (previously Rule 4) – Request for unitary effect. Previously we noted that the requirements for obtaining unitary effect were still up in the air. In this updated version of the draft rules it appears that the EPO has settled on a position, namely:

Unitary effect shall only be registered if the European patent has been granted
with the same set of claims in respect of all the participating Member States

Under the proposal unitary effect will only be possible where a European patent has been granted with the same set of claims for all the 25 participating Member States. This provision therefore means that for EP patents with a filing date before 1 March 2007, it will not be possible to obtain a unitary patent (this is the “Malta muddle” problem, discussed here). Presumably, this rule will require updating as and when Croatia join the party (Croatia joined EPC on 1 January 2008).

Rule 9 – Payment of Renewal Fees. Still no juicy details here but there is some discussion of how the EPO will calculate time limits. Hint: it is in accordance with current EPO practice.

Rule 10 – Surrender. Not much in the way of change in the actual rule here but the explanatory notes now highlight that the validity of a surrender and the effects of a valid surrender will be determined exclusively by national law in accordance with Article 7 Regulation (EU) No 1257/2012.

Explanatory note 5 highlights that there is no post-grant amendment provision within Regulation (EU) No 1257/2012 and that the Regulation does not entrust the EPO with such a task. Note 6 however confirms that a proprietor of a European patent can use the centralised limitation and revocation procedures of Article 105a EPC to limit (or revoke) a granted European patent for all designated EPC contracting states which includes the 25 participating Member States of the Regulation. This therefore confirms that post-grant amendment of a unitary patent will necessarily entail amending any other nationally validated EP patents that were derived from the same patent, e.g. EP(ES).

Mark Richardson 18 February 2014