Another draft of the Rules for the Unitary Patent has been
leaked[1].
It should be noted that the Select Committee issued a communiqué
indicating that these rules had been agreed “in principle”[2]
and so these are not necessarily the final rules but provide a good guide.
The Rules are relatively simple, and it appears that in
“normal” circumstances should prove no problem to those seeking unitary effect
for their European patents.
However, there are a number of issues where wariness is
advisable. Among these are:-
Rule 5
This rule is straightforward in most cases, but an issue
arises in respect of multiple proprietors where there are different proprietors
for different states [In the following, where applicant A is proprietor for
countries α, and applicant B for countries β, and α + β = all participating
Member States].
Since the unitary patent is a unitary instrument that has
uniform effect in all participating Member States and “… may only be limited, transferred or revoked, or lapse, in respect of
all the participating Member States.[3]”
it appears implicit (but is certainly not explicit) that it cannot come into
existence with different proprietors in different states. Otherwise why would the Regulation permit
split ownership at the outset yet forbid the creation of split ownership?
The explanatory notes to the proposed rules indicate that
the Common Representative (normally the first named applicant[4])
will be able to request unitary effect where there are different proprietors
for different states.
If the result of requesting unitary effect is that the
ownership becomes unitary, then there is an implicit cross-assignment between
the different owners to achieve the result that applicants A and B are joint
proprietors for all of countries α and β. Ownership of the unitary patent as an
object of property will normally have to be assessed according to the law of the
first named applicant[5].
So in requesting unitary effect it will have to be assessed whether it is legal
for Applicant A to unilaterally assign a share in his rights in countries α to
B; and more problematically, whether it is legal for Applicant A to unilaterally assign a share in applicant B’s rights
in countries β to A.
This appears extremely messy, and difficult.
Conclusion
Until there are court rulings from the UPC (and CJEU, and
perhaps under Article 7 UP Regulation, national courts) indicating it safe for
unitary effect to be requested where there are different proprietors for different
states; it would appear advisable that assignment takes place and is recorded
prior to requesting unitary effect.
Rules 6, 7, and 22
The notes to the Rules indicate that they place the
“substantive” requirements of the rules in Rule 5, and the “formal”
requirements of the Rules in Rule 6. Among these “formal” requirements are:-
- that the request for unitary effect be filed no later than one month after publication of the mention of grant
- the request for unitary effect shall be filed in writing in the language of the proceedings
- the request shall contain a translation of the European patent as required under Article 6, paragraph 1, Regulation (EU) No 1260/2012.
Articles 9(1)(g) and (h) UP Regulation states that the EPO
has the task:-
- (g) to ensure that a request for unitary effect by a proprietor of a European patent is submitted in the language of the proceedings as defined in Article 14(3) of the EPC no later than one month after the mention of the grant is published in the European Patent Bulletin;
- (h) to ensure that the unitary effect is indicated in the Register for unitary patent protection, where a request for unitary effect has been filed and, during the transitional period provided for in Article 6 of Regulation (EU) No 1260/2012, has been submitted together with the translations referred to in that Article, and that the EPO is informed of any limitations, licences, transfers or revocations of European patents with unitary effect
The language “to ensure” implies that the three mentioned
requirements are more than formal and indeed appears to indicate that they are
conditions to be met for unitary protection to be granted. The three conditions appear to be given equal
weight.
It is interesting therefore that Rule 7 treats the
conditions differently, providing an extension of time mechanism for the second
and third conditions, but not for the first. It is also interesting that Rule
22 permits re-establishment of the first condition. There appears to be no basis in the UP
Regulation for providing for re-establishment of rights.
Conclusion
The legal basis for providing extension of times and
reinstatement for mandatory conditions set out in the UP Regulation appears
dubious. If any errors arise in requesting unitary effect, it may be safer to
use the national route (even with the added validation costs that implies)
until such time as the UPC (and CJEU?) have ruled on the legality of these
provisions.
Rule 13
The payment of renewal fees appears straightforward, but
calculation of the time limit for payment on extension does not. Explanatory
note 8 to this Rule states that:-
The six-month period for the payment of a renewal fee with additional
fee expires on the last day of the sixth month after the due date (pursuant to
Rule 13(2)) and not on the day of that month corresponding in number to the due
date (see Rule 131(4) EPC applying mutatis mutandis under Rule 202)(g)).
Leaving aside the point that Rule 131(4) EPC does not say
that, and that the practice relied on comes from an interpretation of the
corresponding EPC 1973 rule in one case J 4/91 (which amusingly discussed the
effect on potential Community patents): it is not immediately apparent that
this method of calculation complies with EU law. Calculation of time limits in
EU matters requires that:-
If, in a period expressed in months or in
years, the day on which it should expire does not occur in the last month, the
period shall end with the expiry of the last hour of the last day of that month[6];
This does not automatically extend
all dates to the last day of the month.
Conclusion
Particular care will need to be
taken with renewing unitary patents on extension.
Rule 16(n)
This rule addresses recordal of declarations
of surrender. What a declaration of surrender means is uncertain and may depend
on the applicable national law as it is a property right that is being
surrendered, and so Article 7 UP Regulation applies.
Conclusion
If you see a declaration of surrender,
it may not mean the patent is dead.
Rule 20
Various EPC rules are adopted
“mutatis mutandis”. What the effect will be is open to interpretation.
Conclusion
Great care will be needed in
working out what is meant; and conclusions drawn from EPO practice may not
necessarily apply.
Overall conclusion
Although the Rules lean heavily on EPC practice, they do not necessarily mean the same, since a unitary patent is an EU instrument and EU law must prevail.
This does not mean that unitary effect should not be sought: just that care will be required.
[1] http://www.bristowsupc.com/assets/files/Draft%20Unitary%20Patent%20rules%20-%20June%202014.PDF
[2] http://www.epo.org/about-us/organisation/communiques.html#a7
[3]
Article 3(2) UP Regulation (EU) 1257/2012
[4]
Rule 151 EPC and Rule 20(2)(l) draft UP Rules
[5]
Article 7(2) UP Regulation (EU) 1257/2012
[6]
Regulation 1182/71
