Wednesday, 24 April 2013

Could you get a unitary patent from currently pending patent applications?

Will unitary effect also be available to existing patent applications currently pending at the EPO? A recent commenter raised this question, along with some good arguments why the answer ought to be 'No'.

I'm fairly certain however that existing patent applications will be able to benefit from the unitary patent option.

Article 18 of regulation 1257/2012 relating to 'Entry into force and application' states in section 6 that "Unitary patent protection may be requested for any European patent granted on or after the date of application of this Regulation". There is no reservation regarding the date of application.

Also the EPO itself appears to work from this assumption. When the regulations were adopted, a press release from EPO mentioned that "The EPO expects to validate the first unitary patent in 2014."  This seems hardly possible if the application needs to go through examination first.

One reason why giving unitary effect to existing applications may seen as unfair, is because it will give the proprietor access to the unified patent court.

The commenter considered the following hypothetical. Suppose your competitor managed to get a patent granted at EPO with too broad claims. Also suppose that your business is located in the UK, i.e., a land with highly-experienced patent judges. You´re protected from this patent because a UK court wouldn't allow the enforcement of such invalid claims. However, the competitor can now reroute his patent to the UPC. He may never enter a UK court room and still get a court order. (If I do injustice by paraphrasing the original post too much, I apologize).

As pointed out above, I think that getting unitary effect is a possibility. But it is not even needed. The unified patent court will be competent as is.
 The  Agreement on a Unified Patent Court states in article 3, that "This Agreement shall apply to any: (...) (c) European patent which has not yet lapsed at the date of entry into force of this Agreement or was granted after that date, without prejudice to Article 83" (Article 83 is the transitory article in which the opt-out is regulated.)

It thus appears that regardless of the fact that you requested unitary effect you will have access to the unified patent court.

Some support for disallowing changes of scope may be found in EPO case law. For example, in J14/90, an applicant filed just before Denmark joined the EPC. As a result Denmark could not be designated.  EPO did not allow extension of the scope of protection to Denmark through a change of filing date. Because "This is at variance with the need for consistency, and is incompatible with legal certainty and the public interest." But I view getting more countries as quite a bit more serious than getting access to a different court.

Indeed, even in the case described above, I don't think this will be very problematic. For an infringement action the competent court is the local court (assuming there is one) of the defender or of the infringing location. In casu, this will be the UK itself. At least one judge of the panel will be a national of the Contracting Member State. It is not unlikely that you will end up in the same court room as previously, in front of (at least one) national judge.

Thanks to the OP for raising this interesting topic.


  1. I'm the OP

    In our firm we inform the clients that it is not yet clear what will happen with currently pending applications, legislation is still under development.

    I am strongly in favour of a unitary patent, so hope it will be possible.

    Yet, on the other hand, the present body of patent law gives certain rights, and before grant certain options to obtain rights, to an applicant, thereby striking a balance between applicants and third parties that appeared fair to the legislator.

    Expanding the options for the applicant changes this balance, to the detriment of third parties.

    Patent law is not primarily about giving to applicants, but about establishing a fair balance for the optimal benefit of society as a whole.

    Somehow my gut feeling says it is unfair to change this balance halfway through the process.

    Applicants who filed under EPC 1973 stay under EPC 1973.

    In short: I would like to see the unitary patent ASAP, for as many applications as possible, but feel uncomfortable with aspects of legal certainty for retro-application of unitary protection to existing patent applications.

  2. Clearly, legal uncertainty is a problem for applicants.

    You don't want to be in a position, where 5 years down the line, the UPC or perhaps more likely the Court of Justice of the EU, tells you sorry unitary effect was never available for your application, and why were you so foolish to apply for it.

    Personally, I feel less comfortable with the Malta problem, than with the changing courts problem. To deal with the former we have to trust that judges will do the necessary interpreting the way I think they should .

    1. And what with withdrawn designations? Can they be revived via UP

      And different claims for different countries due to national prior rights? Which claims are valid for the UP?

      Or different applicants for different countries due to ownership issues? Can somebody then use UP to get protection in countries where another party is entitled to protection?

      UP could in all these cases give currently pending applications protection for something that was irrevocably lost during prosecution.

      Interesting side issue: What with national prior rights: total loss of UP? or UP even in the country with the national prior right?

      The more I think about it, the more problems I see with giving UP to current applications.

  3. Sigh, you're quite right that there is quite a list of issues which need to be settled. Nevertheless, the fact that there are open questions does not mean that the UP is going away.

    I really appreciate that you voice your concerns though; the more these items are discussed in advance the less surprises there will be. I'll share my view on some of the items on your list in later post.

  4. Concerning invalidly broad claims, there is also the limitation possibility to rectify that issue at present so I would not consider that as a major problem for applying the unitary patent court for pre-pending and pre-granted EP cases.