Monday, 22 April 2013

The Malta problem for requesting unitary effect

Over at IPcopy an interesting problem regarding the request for unitary effect was signaled. It appears that under some interpretation of regulation 1257/2012, unitary effect is not available for any European patent application that was filed before 1 March 2007.

The argument runs as follows:  Article 3(1) of regulation 1257/2012 requires for unitary effect "a European patent granted with the same set of claims in respect of all the participating Member States". The same article further state that `A European patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect.´

Malta is a member of the EPC since 1 March 2007. So if your application was filed before that date you will never get a grant valid for Malta. Your granted patent will not have the same set of claims in all participating member states, since it has a valid claim set for some states and no set at all for another.

One could argue that this is not really a problem since it will resolve itself; at some point most applications will have a filing date after 1 March 2007, and thus are eligible. However, the mess is completed because other late comers to the EPC could become EU member states. This could mean that pending EU applications that were eligible for unitary effect suddenly are not eligible anymore. For example, the most recent country to join the EPC is Serbia, which joined 1 October 2010. If Serbia were to become an EPC member, and ratify the UPC court, suddenly all applications filed before 1 October 2010 are robbed of the possibility of unitary effect.

I don't therefore think it likely that a Court will adopt this interpretation of article 3 of regulation 3(1). On the other hand, it is also not acceptable that a patent application which was not filed for Malta were to get Malta as a 'bonus' upon getting unitary effect. This would cross the rights of third parties. A patent application that does not cover Malta, should not later include Malta after all. Third parties may have relied on the fact that Malta would not be covered by the eventual patent right.
A different interpretation of article 3, which avoids the Malta problem, is to interpret the requirement "granted with the same set of claims in respect of all the participating Member States" as follows: in all participating Member States for which the patent is granted, it should have the same claims. But if the patent is not granted in a particular member state at all, the only effect is that it will not be included in the unitary effect.

In a sense this already happens. That different unitary patent may be valid in different territories, is a feature of the system. Not all member states will ratify at the same moment. So unitary effect obtained later will include more countries than unitary effect achieved earlier.

On the other hand the 'not granted does not count' interpretation offers the possibility to avoid national prior rights by withdrawing the designation for that country. This is a possibility I had not expected to be the intention of article 3. It would mean that you can have unitary patents with widely different scope depending on which countries you allowed to proceed to grant.

Still a further possibility is the following: For Malta we let time solve the problem. Applications filed before March 1, 2007 just can't get unitary effect. For new EU countries a transitory regulation will be made.

The only place to decide which interpretation is correct, is at the UPC. By seeing which interpretation they will take, we will find out. Unfortunately, I need to know the answer 1 month after grant, not years and years down the road.


  1. In all your postings, including this one, I read the assumption that existing applications may also 'benefit' from unitary protection.

    Is this certain? Is a designation option 'unitary' not first needed for that? Is this even possible under the EPC?

    After all, this impacts third parties, who now have the justified expectation that a competitors patent (application) will not be validated in all countries for cost reasons, even though they are all designated.

    Also, this would give applicants a choice of court that did not exist before.

    I would feel cheated by the systemunhappy if my competitor would get an option which did not even legally exist when he filed the application.

    Imagine that I am active in the UK and am fairly confident I can get the competitors patent invalidated there post-grant, so I went ahead with my activities.

    And now all of a sudden he may choose the unitary route with a court where I may not rate my chances so highly. Is that fair?

    Compare this to extension states joining later: not designated is not designated, simple and fair.

    Will retro-designation of unitary protection really be possible?

  2. You raise an interesting questions. I needed some space to give a proper answer, so I have made it into a separate post here. Thanks for pointing this out.