A guide to the UPC and the UP - Flipbook - Page 22
of claims that has been amended to take into account the additional national prior art
document in that country.
2-15
In such circumstances, it would not be possible to register the unitary effect of the patent.
However, if in such a scenario the applicant was still interested in obtaining a Unitary patent,
it might be an option for the applicant to prosecute the invention in the form of a parent and
divisional application, where one of the applications could be a traditional European patent,
potentially with two sets of claims, and the other one would be a narrower patent with claims
that take into account a national prior art for which unitary effect could then be registered.
Territorial Scope
2-16
As stated in 2-12 above, it is a prerequisite of registering unitary effect that the European
patent has been granted for all Participating Member States of the Unitary Patent Regulation.
Currently, all Member States except Croatia and Spain are Participating Member States.
2-17
It follows from this requirement that it would be detrimental to the registration of unitary
effect if one of the respective designations were to be withdrawn in the course of the
prosecution and applicants therefore should be careful not to make such withdrawals.
It is also apparent that two patents for which unitary effect has been registered at different
points in time will not necessarily have the same geographical scope, since the number of
Participating Member States may increase over time.
2-18
There is a further limitation on the geographical scope of the unitary effect of a European
patent which relates to the ratification process of the UPCA, although this is not a requirement
for the registration of unitary effect. In order for the UPCA to enter into force, only 13 countries
including France, the UK (at the time), and Germany had to ratify the UPCA. Currently, the UPCA
is in force in Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy,
Latvia, Lithuania, Luxemburg, Malta, Portugal, Slovenia, Sweden, The Netherlands, and Slovenia.
Further UPCA signatory countries that, however, have not yet ratified the UPCA are Cyprus,
Czechia, Greece, Hungary, Ireland, Romania and Slovakia. Poland, while being a Participating
Member State of the Unitary Patent Regulation is not a signatory of the UPCA. Thus, there is
a discrepancy between the Participating Member States of the Unitary Patent Regulation on
the one hand and the States that have ratified the UPCA. 8 For this situation, art.18(2) para.2
Unitary Patent Regulation provides that a Unitary patent for which unitary effect is registered
in the register for Unitary patent protection shall have unitary effect only in those Participating
Member States in which the Court has exclusive jurisdiction with regard to European patents
with unitary effect at the date of registration. The number of countries that have ratified
the UPCA on the day of registration of unitary effect is decisive for the territorial scope
of the Unitary patent.
2-19
This means that theoretically the Unitary patent may cover more countries than were available
on the date of publication of the mention of the grant of the patent. In rare cases where
registration of unitary effect was initially refused by the EPO but then granted after a successful
appeal to the Court, 9 the number of countries may have increased between refusal and grant.
2-20
Thus, at least for the first few years of the new system, Unitary patents might have varying
geographical scopes. In order to assist third parties in evaluating the geographical scope
of a Unitary patent, r.16(g) Unitary Patent Rules states that there will be information in the
register for Unitary patent protection about the Participating Member States in which the
Unitary patent has unitary effect pursuant to art.18(2) Unitary Patent Regulation.
8
9
Despite the fact that the Court has been set up with the intention of deciding issues of, for example, validity of a Unitary
patent in all Participating Member States.
See paragraphs 2-98 to 2-102.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 12
