A guide to the UPC and the UP - Flipbook - Page 21
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The tasks to be carried out by the EPO are summarised in Ch.IV, (Institutional Provisions)
Unitary Patent Regulation. In this context, the Unitary Patent Regulation requires the
setting-up of a Select Committee of the Administrative Council of the European Patent
Organisation according to art.145 EPC. The task of the Select Committee is inter alia to ensure
the governance and supervision of the activities set out in art.9(1) Unitary Patent Regulation.
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The Select Committee has been established and has adopted the Rules relating to Unitary
patent protection (the Unitary Patent Rules), the Rules relating to Fees for Unitary Patent
Protection and the Budgetary and Financial Rules. 5 With the adoption of these documents,
all of the relevant rules necessary for the Unitary patent were established.
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This chapter discusses the Unitary patent with a focus on procedural issues, e.g. on the
request for unitary effect, the examination of the request, the payment of annuities and
the compensation scheme for translation costs.
Registration of the Unitary Effect
Request for Unitary Effect
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The first requirement for obtaining a Unitary patent is to have a granted European patent. 6
Thus, the countries within the system of the Unitary patent will not have to be designated
in the course of the examination proceedings. Instead, normal examination proceedings
are carried out before the EPO resulting in a granted European patent.
Requirement for Same Set of Claims
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In order to register the unitary effect, the patent must have been granted with the same set
of claims in respect of all Member States which are participating in the enhanced cooperation
in the area of creation of Unitary patent protection at the time the request for unitary effect
is made. 7
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The requirement that a European patent is granted with the same set of claims for all
Participating Member States is fulfilled for almost all European patents granted nowadays.
Having the patent granted with a different set of claims was more common in the past when
some Member States of the EPC did not allow product claims for pharmaceutical compounds.
At that time, it was common practice to have different sets of claims for different countries,
namely a set of claims that included product claims and another set of claims in which the
product claims were usually redrafted as method claims.
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However, even today, there are scenarios in which a European patent can be granted with
different sets of claims. R.138 EPC Implementing Regulations allows that a European patent
be granted with different claims, a different description and different drawings for different
states if the EPO is informed of the existence of earlier national novelty-only references,
i.e. national publications having an earlier priority/application date than the European patent
application at issue but a national publication date after the relevant priority/application date.
Such a national prior art reference would be detrimental only in the country where it was filed
but not in other countries and, in particular, not before the EPO. In order to optimise patent
protection, a patentee might therefore decide to file one set of claims for those countries in
which the relevant national patent application is not considered prior art and a second set
5
6
7
See https://www.epo.org/applying/european/unitary/unitary-patent/legal-framework.html with reference to Official Journal of
the EPO 2022, A41 and A42 as well as 2016, A41.
art.3(1) Unitary Patent Regulation and r.5(2) Unitary Patent Rules.
arts 3(1) and 2(a) Unitary Patent Regulation and r.5(2) Unitary Patent Rules.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 11
