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.
Conclusion
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.
