A guide to the UPC and the UP - Flipbook - Page 24
Examination of the Request for Unitary Effect
2-26
The request for unitary effect is then examined by the EPO, more specifically by the Unitary
Patent Protection Division. 16 The Unitary Patent Protection Division is a special department
set up within the EPO under art.143(2) EPC. The decision of the division may be taken by one
legally qualified member. 17
2-27
According to r.7 Unitary Patent Rules, the examination can, in essence, have one of the
following three outcomes:
– If the requirements under r.5(2) Unitary Patent Rules 18 are met and the request for
unitary effect complies with r.6 Unitary Patent Rules as to the requirements of the request, 19
the unitary effect is registered in the register for Unitary patent protection and the date of
this registration is communicated to the requestor; 20 or
– If the requirements under r.5(2) Unitary Patent Rules are not met or the request for
unitary effect does not comply with r.6(1) Unitary Patent Rules, 21 the EPO shall reject
the request; 22 or
– If the requirements under r.5(2) Unitary Patent Rules are met and the request for unitary
effect complies with r.6(1) Unitary Patent Rules but fails to comply with the requirements
of r.6(2) Unitary Patent Rules, 23 the EPO shall invite the requestor to correct the deficiencies
in a non-extendable period of one month. If the deficiencies are not corrected in due time,
the EPO shall reject the request. 24
2-28
In short, if all formal and other requirements are fulfilled, the unitary effect will be registered.
On the other hand, the request will be rejected if the patent has been granted with different
sets of claims for different Participating Member States and/or if the patent has not been
granted for all Participating Member States and/or if the one-month deadline for filing the
request was not observed. These deficiencies cannot be cured. All other formal deficiencies
i.e. non-compliance with the requirements of r.6(2) Unitary Patent Rules, can be cured and
the EPO will issue an invitation under r.7(3) Unitary Patent Rules to do so within a nonextendable time period of one month.
2-29
It is worth noting that the deadline set according to r.7(3) Unitary Patent Rules has to be strictly
observed. The non-observance of this deadline cannot be cured, since according to r.22(6)
Unitary Patent Rules, re-establishment of rights 25 is ruled out in respect of the time period
referred to in r.7(3) Unitary Patent Rules. This is to keep the procedure as short as possible. 26
2-30
Decisions of the EPO to reject a request for unitary effect can be appealed. 27 If unitary
effect is denied, it may still be possible to validate the patent as a traditional European patent
in the countries of choice within a deadline defined in national law for this specific purpose.
This needs to be provided for in the national laws on implementation of the Unitary Patent
Package, but it is not mandatory under the Unitary Patent Regulation and there are, of course,
16
17
18
19
20
21
22
23
24
25
26
27
r.4 Unitary Patent Rules.
r.4(3) Unitary Patent Rules.
r.5(2) Unitary Patent Rules states that: “Unitary effect shall be registered only if the European patent has been granted with
the same set of claims in respect of all the participating Member States”.
See paragraphs 2-22 to 2-25.
r.7(1) Unitary Patent Rules.
r.6(1) Unitary Patent Rules state that the request for unitary effect has to be filed within one month after publication of the
mention of the grant in the European Patent Bulletin.
r.7(2) Unitary Patent Rules.
r.6(2) Unitary Patent Rules defines certain formal requirements.
r.7(3) Unitary Patent Rules.
See paragraphs 2-76 to 2-80.
See explanatory note to r.22 Unitary Patent Rules.
See paragraphs 2-98 to 2-102.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 14
