Rejects of Requests for Unitary Effect – What can we learn?
Introduction
Since June 2023, after a European patent has been granted, it has been possible to obtain a European patent with unitary effect, also referred to as Unitary Patent, that provides uniform patent protection in initially 17 EU Member States. As shown in the Unitary Patent dashboard provided by the European Patent Office, the system has achieved considerable acceptance.
To be availed of a Unitary Patent, a request for unitary effect must be filed by the patent proprietor. Although most requests are successful, a very small share of requests for Unitary Effect (7 at the time of writing) have been rejected.
When looking at these rejected requests we see a diverse set of proprietors:
- A Swedish large entity: Volvo Construction Equipment AB
- A French university: Universite de Limoges
- A French independent inventor: Assor, Michel
- Three US large entities: Nokia of America Corporation, Thermo Fisher Scientific Inc, QUALCOMM and one US series D startup: Divergent Technologies Inc.
The rejected requests fall into two main categories i) where not all participating member states were originally designated and ii) incorrect filing of a translation, discussed below.
Not all participating Member States designated
Currently, all EU Member States, except Spain and Croatia, participate in the enhanced cooperation in the area of the creation of unitary patent protection: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Sweden. To be eligible for registration as a Unitary Patent, a European patent must have been granted with the same set of claims in respect of all the above 25 participating Member States.
EP2045399 - Heavy equipment having tool box opening in forward direction of the equipment was filed in 2008. For European patent applications filed before 1 April 2009, the system of individual designation fees for each contracting state designated, up to a maximum of seven times the amount of the designation fee to cover all states, applied. At that time, if the applicant intended to pay fewer than seven designation fees when filing the application, that party indicated the relevant contracting states in the appropriate section of the request for grant form. EP2045399 was filed on 26.09.2008 with the following contracting states designated: Germany, France, United Kingdom and Italy. It thus included the designations of 3 participating Member States. Or in other words 22 participating Member States were not designated. The decision to reject the unitary effect thus concludes that EP2045399 has not been granted with the same set of claims in respect of all 25 participating Member States as required for obtaining unitary effect.
EP3223488 - Method for secure authentication of mobile devices similarly was filed in 2017, however it was a divisional of parent application filed in 2007. Different from the previous example all the contracting states party to the EPC and valid for the parent application at the time of filing of the divisional application were deemed to be designated: AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HU, IE, IS, IT, LI, LT, LU, LV, MC, NL, PL, PT, RO, SE, SI, SK, TR. A divisional application is accorded the same date of filing as the earlier application and all contracting states designated in the earlier application at the time of filing of a European divisional application are deemed to be designated in the divisional application. Consequently EP3223488 received a filing date of 29.01.2007. This date of filing lies before 01.03.2007, which is the date on which Malta acceded to the EPC. EP3223488 thus does not include the designation of Malta. Similar to the above case, the decision to reject the unitary effect thus concludes that EP3223488 has not been granted with the same set of claims in respect of all 25 participating Member States as required for obtaining unitary effect.
EP3514533 - Apparatus for monitoring mercury gas in a sample is an almost identical example as the case above. EP3514533 was filed in 2018, however also as divisional of a parent application filed in 2006. Also here all the contracting states party to the EPC and valid for the parent application at the time of filing of the divisional application were deemed to be designated: AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HU, IE, IS, IT, LI, LT, LU, LV, MC, NL, PL, PT, RO, SE, SI, SK, TR. Also here the filing date of the parent application was before 01.03.2007, which is the date on which Malta acceded to the EPC. EP3223488 thus does not include the designation of Malta. The decision to reject the unitary effect reasoned that EP3514533 has not been granted with the same set of claims in respect of all 25 participating Member States as required for obtaining unitary effect.
EP3514565 - Providing enhanced position location in wireless communications is similar to the examples above. EP3514565 is a divisional from an earlier patent application filed in 2006. All the contracting states party to the EPC at that time were designated, but this did not include Malta. The decision to reject the unitary effect reasoned that EP3514565 had not been granted with the same set of claims in respect of all 25 participating Member States.
Missing translation
Currently, there is running a six-year transitional period (which may be extended up to a maximum of 12 years), in which the patent proprietor for obtaining a Unitary Patent has to file one translation of the European patent specification:
- into English if the language of the proceedings before the EPO was French or German
- into any other official language of an EU member state if the language of the proceedings was English.
The translation must be filed together with the request for unitary effect. The translation is for information only and has no legal effect.
After expiry of the transitional period, such a translation will no longer be required to obtain a Unitary Patent.?
EP3525593 - Process for eliciting a plant by means of edible macroscopic fungal extracts used French as language of the proceedings before the EPO. In other words an English translation of the European patent specification had to be filed with the request for unitary effect. However, the proprietor did not file such an English translation when filing the request for unitary protection, and subsequently also did not respond to the invitation dated 20.07.2023 to remedy this deficiency within one month. The decision to reject the unitary effect thus reasoned that this deficiency was not timely remedied and the necessary translation for obtaining unitary was not timely filed.
EP3789048 - Meniscal composite scaffold comprising human recombinant collagen , similar to the example above used French as a language of the proceedings before the EPO. Similarly, the English translation was not provided when filing the request for unitary protection. Neither was one provided in response to the invitation dated 12.06.2023 to remedy this deficiency within one month. The decision to reject the unitary effect similarly concluded that the necessary translation for obtaining unitary was not timely filed.
EP3634721 - An interconnected deflectable panel and node and methods for producing same used English as language of the proceedings before the EPO. In such a case a translation in any other official language of an EU member state is to be filed with the request for unitary effect. The proprietor did not file such a translation when filing the request for unitary protection, and subsequently also did not respond to the invitation dated 11.09.2023 to remedy this deficiency within one month. The decision to reject the unitary effect thus reasoned that this deficiency was not timely remedied and the necessary translation for obtaining unitary was not timely filed. Additionally, the postal code in the address of the proprietor was missing and also this deficiency was not timely remedied
What can we learn from these rejected requests?
Granted patents having an application filing date before April 2009 when designation of all contacting states required payment of seven times the designation fee, or before March 2007 when Malta was not yet a contracting state of the EPC need to be carefully checked. The designated contacting states of a patent can be found in the European Patent Register – if not all 25 EU states are listed, the request for unitary effect will be refused, and there is no remedy.
The translation supplied during the 6 year transitional period is for information purposes only, has no legal effect, and needs to be filed within the one month period after grant. If the one month period has been missed in addition to the one month remedy period, there may still be time to validate the patent using the classical (state-by-state) validation which has a 3 month period as from the date of grant.
At De Clercq & Partners, our teams of patent attorneys, paralegals and IT specialists have been busy preparing since before the start of the unitary patent to handle requests for unitary effect. We are able to provide comprehensive advice about options for validation, as well as optimising and taking care of the translation requirements timely. For more information, please do not hesitate to contact us at info@dcp-ip.com