Wednesday, 21 May 2014

Possible solutions for the national prior rights problem in the unitary patent.

Yesterday, we found that national prior rights may surprisingly force the proprietor of a unitary patent to restrict his claims for all participating countries; not just for the country for which the national prior right is valid.

We consider three options the legislator could use to resolve this problem. We assume that this problem is considered serious enough to warrant solving and that the unitary regulations, agreement, and the EPC are not changed.

Allow conversion after revocation
Any state in which unitary patents are valid could introduce the possibility to convert a unitary patent to a national patent if the unitary patent is revoked in light of a national right.

Pro: This solution has a basis in the EPC. According to Article 135(1) and (2) EPC:
The central industrial property office of a designated Contracting State shall, at the request of (...) the proprietor of a European patent, apply the procedure for the grant of a national patent in the following circumstances: (...)   in such other cases as are provided for by the national law, in which the European patent application is (...) revoked under this Convention.

It seems that this solution would be fit in the existing legal framework without any problems.

Con: All participating member states should provide for this possibility in their national law. Furthermore, a proprietor who is in this situation has to apply for a national grant quickly and in many countries.

Allow partial revocation of a unitary patent
The rules of procedure for the UPC could be modified to allow a court to revoke a unitary patent in part. These rules are not final yet, so such modification can still be made.

Pro: For proprietors this solution would be easy. At the UPC claims can be defended specific for each country, depending on the national prior rights that may exist there. If the patent falls for some countries, infringement may still be found for the remaining countries.

Con: This solution would violate the unity of the unitary patent. According to regulation 1257, the unitary patent may only be revoked in respect of all the participating Member States.

Moreover, the proprietor cannot amend his claims differently for countries which have a prior right than for other countries. This would probably mean that he will lose a country with a prior right, since amending would mean losing scope in all other countries.

Declare a unitary patent non-enforceable for some countries
The rules of procedure for the UPC could be modified so that a court cannot revoke the unitary patent  for a national prior right, yet may declare the unitary prior right unenforceable in that country.

Pro: This solution does not seem to violate the literal wording of the regulations. Moreover, this problem can be fixed in one location (the UPC rules). This solution does not require action of the proprietor in all countries. 

Con: Although, I do not see which article this solution violates, it still seems to violate the spirit of the unitary patent. Moreover, it has the same problem as the previous solution: The proprietor cannot amend freely.

My guess would be that, if this problem is addressed, it will be according to the first solution.

Conversion has the advantage that is does not require any legal contortions. It provides the greatest security and freedom for patent holders. It also seems to be only solution in which the proprietor can salvage his patent for the countries with a prior right, without loosing scope in the other countries. It shifts the burden of solving this problem away from the EU and the UPC to national law though.


  1. Antonio Pizzoli22 May 2014 at 10:41

    Very interesting topic: I have read a lot about this issue (consequence of drafting regulations behind closed doors) and nobody mentioned Art 135 EPC until now, my best compliments!

    I just have two doubts:
    1) "under this Convention" should mean after opposition (+ appeal), see e.g. Art. 137(2)b EPC last line; could it also apply to a revocation of a unitary patent under the UPC Agreement?
    2) the jurisdiction would be shifted from the UPC to national courts, is this is legally possible?

    Solutions 2 and 3 should not be practicable without amending the Regulations or the Agreement

  2. Thanks for the feedback. You raise an interesting question. Does a revocation of a Court, satisfy the 'revoked under this Convention' condition.

    I would argue that it does, because the basis for such a revocation is art. 138/139 of the EPC. This is why I would regard a revocation of a Court as falling under the conditions of article 135. Maybe, this is too generous.

    I'm not sure Art. 137 applies to Art. 135(1)b.

    As it is, there are hardly examples where a National law allows conversions under Art. 135(1)b...

    1. Antonio Pizzoli22 May 2014 at 12:25

      In Italy you may convert a revoked EP into an Italian utility model application. When I did it for the first time (for a non-entered European phase) the legal division of the EPO asked me for details of the conversion procedure in Italy, so I guess it is used seldom.
      Though Art. 137 EPC strictly relates to applications, I do not see why it should not apply also to patents (in Italy of course you need to file an Italian translation of the revoked patent).

  3. The effect of national rights on the unitary patent would appear to add additional grounds for revocation for those countries where the art is inapplicable under either the EPC or national law; and this would be contrary to Article 138 EPC and 139 which provide a complete list of grounds for revocation..

    Revocation of rights in Germany based on an earlier national right in the Netherlands does not appear to be contemplated in the EPC. This is particularly the case if the earlier national rights completely anticipates the invention claimed.

    Article 3(3) UPR provides that the unitary effect of a European patent shall be deemed not to have arisen to the extent that the European patent has been revoked or limited. This appears to leave a residual national right that could found the basis of national protection in parallel with the restricted (A+B) unitary patent. In other words, a unitary patent covering A+B, and national rights covering A excluding A+B. How those national rights apply [perhaps by a late validation route?] is for the national offices to decide.

    1. You make my day. If I understand your point correctly, a judge will always violate some EPC article when he is confronted with a UP and a national right, say from the Netherlands. Either he does not revoke the Patent, violating A.138/139 for the Netherlands; or he does revoke it, violating it for Germany.

      I'm not sure the last option (revocation) is illegal though. The applicant chose to have unitary effect, and thus is bound by the additional conditions that entails (i.e. unitary character).

      I find your fourth option interesting: Late validation of the European patent, in case the unitary effect was (partially) revoked.

      I worry though that, this option might violate Art. 4(2) UPR, because in that case you would have a National patent (for A) and a unitary patent (for A+B) both derived from the same EP grant.