A guide to the UPC and the UP - Flipbook - Page 25
no provisions on this in the EPC. Certain Participating Member States such as Germany have
amended their national patent law to prevent a situation occurring where the time period
for validating a European patent expires before a final decision is made on whether unitary
effect will be denied to a patent. This has been achieved, by introducing a new section into
the German Law on International Patent Conventions that defines the interaction between
international patent law treaties and national German patent law. According to Art. II, s.15(3)
of this law, 28 the German annuities of a European patent for which the registration of unified
effect has been denied become due only on the day the decision of the EPO to reject the
request was notified or – if an appeal was filed with the Court – when the notification of the
final decision of the Court occurred (i.e. the first instance decision if no appeal is filed or the
decision of the Court of Appeal). According to the German Act on fees before the DE-PTO,
annuities can be paid without surcharge within two months after the due date and with
surcharge within six months after the due date. Thus, if the request for registration is rejected,
the patentee will have enough time to pay the annuities. Should the regular annuities only be
due after the notification of the relevant decision, the regular date applies.
Register for Unitary Patent Protection
2-31
According to r.15 Unitary Patent Rules, the EPO establishes a register for Unitary patent
protection as a special part of the European Patent Register. The information contained
in the register is defined in r.16 Unitary Patent Rules and includes e.g. the date of filing the
request for unitary effect, the date and purpose of the decision and the registration of unitary
effect, the date of registration of the unitary effect of the unitary patent, the Participating
Member States in which the European patent has unitary effect, details on the proprietor and
the inventor, information on the rights and transfer of such rights relating to the Unitary patent,
licensing commitments, date and purport of the decision on the validity of a Unitary patent
taken by the Court, date of receipt of the request for re-establishment of rights, the refusal
of this request, and the potential date of re-establishment of rights.
Translation Issues
Translation Requirements
2-32
According to art.3 Translation Regulation, no further translations shall be required where
the specification of a European patent which benefits from unitary effect has been published
in accordance with art.14(6) EPC. Art.14(6) EPC requires that the specification of European
patents shall be published in the language of the proceedings and shall include a translation
of the claims in the two other languages of the EPO. In other words, if a European patent has
been published with a specification in English, French or German, and with claims in the two
other languages, no further translation is required. However, there are in essence two
exceptions in which a translation is still required.
Translation Requirements in a Transitional Period
2-33
28
The rationale behind art.3 Translation Regulation is that it is expected that in the not-too-far
future high quality machine translations will be available, so that a granted European patent
can be automatically translated into any official language of the Member States participating
in the Unitary patent system.
See: https://www.bgbl.de/xaver/bgbl/start.xav#__bgbl__%2F%2F*%5B%40attr_id%3D%27bgbl121s3914.pdf%27%5D__
1679776960772 [Accessed 2 May 2023].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 15
