A guide to the UPC and the UP - Flipbook - Page 23
Multiple Proprietors
2-21
Although it has not been included in the Unitary Patent Rules, explanatory note 6 to r.5 10
stipulates that unitary effect can also be requested where a European patent was granted
to multiple proprietors in respect of the same or different Participating Member States as
long as the European patent had been granted with the same set of claims in respect of all
the Participating Member States. Procedurally, the request will then have to be filed via a
common representative.
Requirements of the Request
2-22
The deadline for filing the request for unitary effect is one month after the date of publication
of the mention of grant in the European Patent Bulletin. 11
2-23
The request for registration of unitary effect has to be filed in writing in the language of
the proceedings and must contain specific information as defined in r.6(2)(a) to (c) Unitary
Patent Rules. In particular, information about the proprietor of the European patent making
the request, the number of the European patent and the representative’s particulars must
be included.
2-24
The requirement to file the request for unitary effect in the language of the proceedings is a
deviation from the EPC regime, where any of the three EPO official languages may be used in
written proceedings as a matter of principle. Thus, care must be taken to take this into account
and to ensure that the request for the registration of unitary effect is filed in the language of the
proceedings. 12 In order to avoid the request for registration of the unitary effect being rejected
for the sole reason that it has been filed in the wrong language, the corresponding EPO form
contains the request in the three official languages of the EPO. 13
2-25
Finally, during a transitional period of, initially, six years 14 a translation of the European
patent has to be provided. 15 In short, in cases where the language of the proceedings is
French or German, a full translation of the specification of the European patent into English
has to be provided. If, in the alternative, the language of the proceedings is English, a full
translation of the specification of the European patent into any other official language of
the EU has to be provided.
10
11
12
13
14
15
https://www.epo.org/law-practice/legal-texts/official-journal/2016/05/a39.html.
recital 18, art.9(1)(g) Unitary Patent Regulation and r.6(1) Unitary Patent Rules.
r.20(2)(a) Unitary Patent Rules states that, unless otherwise provided, for all other written submissions, the language
requirements of rr.3(1) and 3(3) EPC Implementing Regulations apply, i.e. written proceedings can be filed in any official
language of the EPO and documentary evidence can be in any language (although the EPO can request a translation be filed
in one of its official languages).
See: https://documents.epo.org/projects/babylon/eponet.nsf/0/F3F0BDECAD8F5F35C12588D9005A2D4A/$File/
epo_form_7000_03_23_editable.pdf and explanatory note 7 to r.20 Unitary Patent Rules, https://www.epo.org/lawpractice/legal-texts/official-journal/2016/05/a39.html.
The quality of translations will be reviewed at years six, eight and ten and the Commission will report to the Council making
recommendations, if appropriate for the termination of the transitional period. In any event it will terminate 12 years from
the date of application of the Translation Regulation (arts 6(3) to (5) Translation Regulation).
art.6(1) Translation Regulation, r.6(d) Unitary Patent Rules. See also paragraphs 2-33 to 2-55.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 13
