A guide to the UPC and the UP - Flipbook - Page 32
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Should the patentee have registered an exclusive licence in the register for unitary protection,
it will not be possible to file a statement that the patentee is prepared to allow any person to
use the invention as a licensee. The same considerations also apply if the exclusive licensee has
not yet been recorded in the register but if a request for the recording of such an exclusive
licence is pending. 68 By the same token, if a statement that the patent proprietor is prepared to
allow any person to use the invention as a licensee has been filed at the EPO, it is not possible
to record an exclusive licensee in the register. It will only be possible to do so if and when the
relevant statement has been withdrawn. 69
Re-establishments of Rights
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The Unitary Patent Rules provide for the possibility of requesting the re-establishment of rights.
R.22 Unitary Patent Rules stipulates that a proprietor of a European patent or of a Unitary
patent who, in spite of taking all due care required by the circumstances, was unable to observe
a time limit vis-à-vis the EPO shall have their rights re-established upon request, if the nonobservance of this time limit has the direct consequence of causing the Unitary patent to lapse
according to r.14(1)(b) Unitary Patent Rules, or the loss of any other right or means of redress.
Not filing the request for registration of unitary effect is covered by the term “or the loss of any
other rights or means of redress”.
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There are two situations where there is no possibility of re-establishment of rights:
– Failure to meet the time period specified in r.7(3) Unitary Patent Rules, i.e. the deadline
which the EPO sets when there are curable deficiencies in the request for registration of
unitary effect; and
– Failure to meet the deadline for filing a request for re-establishment of rights itself. 70
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As usual in requests for re-establishment of rights, a prescribed fee must also be paid. The fee
payable is in the same amount as that laid down in art.2(1)(13) Rules relating to Fees under the
EPC 71 which currently is €685. 72 The intention in having the same fee apply to the Unitary
patent is to ensure full alignment with European patents. The request must also state the
grounds on which it is based and set out the facts on which it relies. The omitted act must also
be completed within the relevant period for filing the request. 73
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The above summary shows that r.22 Unitary Patent Rules has been drafted along the lines
of art.122 EPC. However, there are important differences relating to the deadline for filing
the request. Two different deadlines have to be observed for filing such a request:
– In r.22(2) Unitary Patent Rules, the usual deadlines are defined for filing a request for reestablishment of rights, namely that the request has to be filed in writing within two months
of the removal of the cause of non-compliance with the period, but at the latest within one
year of expiry of the unobserved time limit; and
– With respect to not observing the deadline for filing the request for registration for unitary
effect, r.22(2) provides that a request for re-establishment of rights in respect of the period
specified in r.6 Unitary Patent Rules shall be filed within two months of expiry of that period.
The reason for this shortened period is that there should be legal certainty as to the
question of whether or not the unitary effect has been registered as soon as possible.
Consequently, the Select Committee decided to implement an expeditious procedure with
a short overall duration. It is said that there is a prevailing interest in early clarification of
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r.12(3) Unitary Patent Rules.
r.12(4) Unitary Patent Rules.
r.22(6) Unitary Patent Rules.
art.2(2) Rules relating to Fees for Unitary Patent Protection.
Last amended by decision of the Administrative Council of 13 December 2013 and applicable from 1 April 2014.
r.22(3) Unitary Patent Rules.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 22
