Wednesday, 3 September 2014

Last June a new draft version of the version of the 'Rules relating to unitary patent protection' has been adopted by EPO. I understand that the current version will be the same as the final version except for a small number of remaining issues. I've been looking at the nearly-definitive version and will start a series of posts noting thing that struck me.

The rules of last year had three alternative versions of the requirements for obtaining unitary effect. These options reflected the difficulty in interpretation the corresponding requirement from the EU regulation 1257/2012. According to article 3, the a "European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States (...) "

Should it matter if most participating member states have not yet ratified the unified patent court agreement, and thus no unitary effect would be available in those states? (Article 18(2)). And how about recent EU member states, such as Malta. Many EPO currently pending patent applications were filed before Malta joined EPO and thus cannot obtain the same claims for that state. Can those patents get unitary effect? I referred to this as the 'Malta problem'. And what should happen when Croatia (currently EPO and EU member but not a participating member state) decides to join the unitary patent system?

The current draft rules have made a choice in this respect. Rule 5(2) requires that "Unitary effect shall only be registered if the European patent has been granted with the same set of claims in respect of all the participating Member States.".   The notes to the rules further clarify that "unitary effect is registered only where the European patent has been granted with the same set of claims for all the 25 participating member states, irrespective of whether these States have ratified the UPC Agreement or not."

This means that all patent applications filed before 1 March 2007, i.e., before Malta joined the EPC will not be eligible for unitary effect, even if these patents are granted after the unitary system takes effect. It also means that once the Croatia joins the unitary system, any patent application 1 January 2008 is not eligible.

It would be impracticable if some patents which are eligible for unitary effect lose this status. In this respect, it would be easiest if Croatia joined the unitary system before the unitary system takes effect or after 2028, when all patent that could not designate Croatia have lapsed.  Perhaps, sooner is better than later in this regard.