A guide to the UPC and the UP - Flipbook - Page 33
the legal situation in the state of uncertainty following grant where the patentee can either
opt for a Unitary patent or a different legal regime via national validations. 74
2-80
The test for due care as required for re-establishment of rights finally will have to be
established by the case law of the Court.
Actions Against Decisions of the EPO
2-81
All decisions of the EPO taken in the framework of administering the Unitary patent are open to
a legal review. This includes appeals against the decision to reject the request for unitary effect
but also all other decisions, such as decisions on the compensation for translation costs or
decisions on the payment of renewal fees.
2-82
If a party 75 is adversely affected by a decision of the EPO in carrying out the tasks referred
to in art.9 of the Unitary Patent Regulation, it is not the Boards of Appeal of the EPO to whom
an appeal is made. Instead, under art.32(1)(i) UPCA, the Court has competence to hear such
actions. In doing so, the Court may exercise any power of the EPO in accordance with art.9
Unitary Patent Regulation. 76 Rr.85 to 98 RoP describe the specific written procedure for such
actions. Beyond that, the general rules for proceedings before the Court apply.
2-83
In essence, an action may be brought against a decision of the EPO in carrying out the tasks
referred to in art.9 Unitary Patent Regulation, which includes decisions of not registering the
unitary effect and decisions on the (non-)registration of licences. Violation (called
“infringement”) of any of the implementing rules of the EPO for carrying out the tasks referred
to in art.9 Unitary Patent Regulation and violation of essential procedural requirements or
misuse of power 77 may also form the basis for an action against a decision of the EPO.
2-84
An action against a decision of the EPO has suspensive effect. 78
2-85
A claimant does not have to be represented by lawyers or European patent attorneys with
appropriate litigation qualifications 79 and therefore representatives before the EPO can conduct
such actions before the Court. 80
2-86
The President of the EPO may be invited to comment in writing on any question arising in
these proceedings. 81 In proceedings relating to an appeal to annul a decision of the EPO to
reject a request for unitary effect, the President of the EPO also has the right to appeal a first
instance decision of the Court. 82
2-87
It is of importance to note that there are two different types of appeals following different rules
and schedules, namely the standard procedure for all decisions other than the decisions related
to a rejection of a request for unitary effect; and an accelerated process for decisions related to
a rejection of a request for unitary effect. These two alternatives are discussed separately.
74
75
76
77
78
79
80
81
82
See explanatory note 3 to r.22 Unitary Patent Rules, https://www.epo.org/law-practice/legal-texts/officialjournal/2016/05/a39.html.
“a party” can be any natural or legal person, or any body entitled to bring actions in accordance with its national law and who
is affected by a decision of the EPO in carrying out the tasks referred to in art.9 Unitary Patent Regulation (art.47(7) UPCA).
art.66(1) UPCA.
r.87 RoP.
r.86 RoP.
art.48(7) UPCA and r.88(4) RoP.
See also paragraphs 2-107 to 2-111.
See e.g. rr.94, 97(4) RoP.
r.97(5) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 23
