Rejections of Requests for Unitary Effect – an update

27 June 2024

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 (UP), 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 (0.1% at the time of writing) have been rejected. The rejected requests fall into four main categories i) where not all participating member states were originally designated and ii) incorrect filing of a translation, iii) late filed request, iv) incomplete proprietor list as discussed below.

i) 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, namely: 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.

There are three main circumstances where an EP patent has been granted in less than the requisite 25 member states:

a) 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. Thus, it used to a reasonable option designate less than seven contracting states, thereby saving designation fees, in circumstances where limited territorial protection was acceptable;

b) One or more of the 25 Member States had not yet acceded to the EPC prior to the filing of the EP patent. Examples include Malta (acceded 1 March 2007), Lithiania (acceded 1 December 2004 ), and Latvia (acceded acceded 1 July 2005 ). Thus EP patent applications filed before 1 March 2007, and divisional applicatiopn derived therefrom, can never be granted for the 25 participating Member States;

c) A designation of one of the 25 Member States was withdrawn prior to granting.

Reviewing the list of rejected UP requests, the following were rejected for reason a): EP 2045399, EP 3223488; for reason b): EP 2273446, EP 2609855, EP 3009093, EP 3156090, EP 3454516, EP 3454627, EP 3461875, EP 3539504, EP 3611617, EP 3842090, EP 3514533, EP 3514565; and for reason c) EP 3970521.

ii) 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. An invitation to remedy the deficiency is issued to be replied within one month. If not duly replied to, the request for unitary effect will be rejected.

Note that after expiry of the transitional period, such a translation will no longer be required to obtain a Unitary Patent. 

The requests for unitary effect were rejected for reason ii) in respect of the following patents: EP 2735771, EP 2855372, EP 3631138, EP 3634721, EP 3789048, EP 3525593.

iii) Late filed request

The Request for unitary effect, including supply of the translation must be filed within 1 month of the publication of mention of grant in the European patent bulletin i.e. date of grant. If the request is late filed, it will be rejected. The request in respect of EP 3351344 was rejected for this reason.

iv) Incomplete proprietor list

The Proprietor(s) of the granted patent must request the unitary effect. Where multiple Proprietors are mentioned on the granted patent, the same must be indicated in the request form. If one or more Proprietors are missing, the deficiency can be remedied by responding within one month to an invitation. The consequence of not responding is a rejected request - this was the case for EP 3270081.

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 at least 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 rejection, 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.

A standard form (EPO Form 7000) requesting unitary effect is available from the EPO and guides requesters through the requirements, including the listing of Proprietors. Where a form has been incorrectly completed, the EPO will invite correction within a one month period. If both deadlines have been missed, the request is rejected and reversion to classical validation would be a principal remedy if available.

A request for unitary effect filed after the one month period will result in rejection; the classical validation route provides a lifeline if not too late.

While the proportion of requests rejected remain low (less than 0.1%), the quantity of rejected requests nonetheless has increased since our last report (here), in particular, the non-membership of Malta to the EPC at the time of the EP filing is now by far the major cause of rejection.

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. Our twenty qualified European Patent Ligitors 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.