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EPO – Rules relating to Unitary Patent Protection

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EU flagThe EPO Select Committee approved the Rules relating to unitary patent protection on 24 June. A copy of these rules has appeared online and is discussed below.

During a session of the recent “Unitary patent and Unified patent court” seminar held in Paris, Jerome Debrulle (Chair EPO Select Committee) indicated that the Select Committee had approved the rules that will be used to administer the unitary patent. IPcopy had not seen a copy of these rules at the time of our conference review post but now, thanks to reader Hans van Tongeren, we have been pointed towards what appears to be the latest version of the rules, which can be found on the Bristows website here.

The EPO’s rules document runs to over 80 pages and there is also a 40+ page Annex which highlights the changes from the previous version of the rules. An overview of the structure of the rules document is provided below along with some “highlights” from the rules themselves.

The Rules document is formed into five main parts:

-Part I – Institutional Provisions. This part covers the Subject Matter of the Rules, the Competences of the Select Committee and the powers of both the EPO President and the Unitary Patent Protection Division.

– Part II – Procedures to be carried out by the EPO. Possibly the chunkiest part of the rules document, this part covers the Request for Unitary Effect, the Compensation Scheme (for translation related costs for SMEs and the like), Licences of Right, Renewal Fees (still no figures!) and Lapse of a unitary patent.

– Part III – Information to the Public. This part covers the Register for Unitary Patent Protection and other publications (Official Journal, publication of translations, inclusion of Unified Patent Court decisions in the file etc.)

– Part IV – Common Provisions. This part highlights the provisions of the EPC that shall apply to the unitary patent system.

– Part V – Financial Issues. A very short part that presumably has wide ranging implications for the task of setting the renewal fee.

What’s New and What has caught our eye?

The Annex (beginning on page 88) handily highlights areas of the rules that have seen changes since the last version. In no particular order of importance, here’s our highlight reel.

Rule 1 – Union law (including the two unitary patent regulations) will prevail over these EPO rules. Previously only the two regulations were explicitly mentioned. Is this a concession due to the Spanish challenge at the CJEU?

Rule 3 (Notes) – the EPO President will be issuing an annual management report to the Select Committee.

Rule 5 (Notes) – unitary effect will only be granted where the EP patent has been granted with the same set of claims for all 25 participating member states, regardless of whether these states have ratified the UPC Agreement.

Rule 5 (Notes) – not strictly something new but the Unitary patent register will indicate which of the participating member states had ratified when the unitary patent request was made. The pool of countries here could vary between 12 (if Italy are one of the first 13 to ratify) and 24 (Poland don’t look like they will ratify the UPCA even though they are one of the 25 countries to be covered by the unitary patent regulations).

Rule 5 (Notes) – where there are multiple proprietors they will be required to file a declaration confirming that they all want a unitary patent. If this declaration is missing then the EPO will invite the proprietors to file it within a non-extendable one month period. If it is not filed then the unitary request is rejected. Will such a rejection come quickly enough to enable classical validations as a fall back?

Rule 6 – this now seems to include a statement that a unitary effect request cannot be withdrawn. This is included for the sake of legal certainty.

Rule 16 (Note 19) – the EPO will act as a recipient for declarations of surrender of a unitary patent but will not check the validity of such a surrender. That will be up to national law.

Rule 19 – Unified Patent Court decisions forwarded to the EPO will be included in the files relating to the EP patent with unitary effect where they will be open for inspection.

Mark Richardson 31 July 2014

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