2025 Week 35
UPC upholds the EPO’s refusal to register a unitary patent due to late correction of an administrative error.
The grant date of a European patent sets a 1-month deadline for “requesting unitary effect”, i.e., for asking the EPO to register the granted patent as a unitary patent (UP). Currently covering 18 EU member states (including Germany, France, Italy and the Netherlands), UPs offer an efficient alternative to nationally validating granted European patents in the UPC member states. The popularity of UPs has been steadily increasing since they became available in 2023, especially among European applicants who now register almost 40% of their granted European patents as UPs. (This EPO webpage hosts interactive charts showing the uptake statistics.)
The requirements and procedure for registering a UP are set out in the “UP Rules”. For instance, Rule 6 specifies the formal items to be included with the UP request, such as the European patent number and the particulars of the patent proprietor(s).
The facts of the case
The request to register EP 3691518 B1 as a UP was made within 1 month of its grant date. However, the EPO noticed a discrepancy in the request. The name of the third proprietor listed on the request form (“Université de Rennes 1”) did not match the third proprietor named on the European patent register (“Université de Rennes”). Also, their addresses were different.
The EPO invited the proprietor’s representative to correct these discrepancies, setting a further 1-month deadline under Rule 7(3) to do so. Unfortunately, the correct name and address was only furnished to the EPO a few days after this further 1-month deadline expired.
So the EPO refused to register the UP.
Additional time available?
Should a patent proprietor fail to meet the initial 1-month deadline for requesting unitary effect, Rule 22(1) allows them to re-establish their right to file the UP request up to two months after expiry of the initial deadline, if the failure was despite all due care. However, Rule 22(6) explicitly rules-out reestablishment of the further 1-month deadline provided by Rule 7(3) to correct any deficiencies within the request.
So, in this case, the only procedural option was to appeal the refusal at the UPC, which has exclusive competence under Article 32.1(i) of the UPC Agreement to hear actions concerning the EPO’s administration of unitary patents.
Unfortunately for the proprietor, the UPC Central Division Milan dismissed the appeal. The case went to Milan in view of the subject matter of the patent (medical devices).
The appeal to the UPC
In the appeal, the proprietor’s representative explained that the identity of the third proprietor had been updated on the EP register without his knowledge. A new legal entity called Université de Rennes had been created on 1 January 2023 to replace “Université de Rennes 1”, which had legally ceased to exist, and the relevant documentation had been filed at the EPO by another representative.
At point 40 of the decision, the UPC judge found that the EPO was right to invite the proprietor’s representative to correct the third proprietor’s name and address. The judge also stated that the fact that the invitation ‘was not “caught” by the appellants' administrative departments is an internal fact for the appellants that has no bearing on the EPO's compliance with the rules…’ (point 39 of the decision).
At points 42-44 of the decision, the UPC judge commented on the balance between procedural flexibility and legal certainty in the rules governing UP registration.
44. The possibility of remedying formal irregularities in the application for unitary effect within a perfectly reasonable period of 30 days is already an expression of the flexibility of the system in relation to the concrete needs of patent owners. However, it is the responsibility of patent holders - or where appropriate their representatives - to ensure that they act within the limits of the flexibility guaranteed by the legal system, without relying on margins additional to those within which all operators in the sector are called upon to act, on an equal footing. [Machine translation]
The EPO has earnt a reputation for strictly following the letter of the law. Clearly, the UPC did not overturn or criticise that strict approach here.
It seems a tough outcome, given the relatively minor errors, but the clear message is that these formalities are deemed important and mistakes should be avoided where possible, and of course strict time limits must be met. The fact that the deadline for filing the correction is completely inextensible might be news for some.
However, it is also worth bearing in mind that the outcome need not be loss of the patent, but instead only loss of unitary effect. There is a safety net of conventional national validation of the European patent, but this would have to be started urgently once there is a sign that there are problems with the request for unitary effect.
In terms of timing, the EPO decision on unitary effect in the present case issued about 6 months after the date of grant, at which point it would be too late to start the national validation process for many UPC countries.
Faced with a formal objection of this type from the EPO to the request for unitary effect, and with the knowledge that these rules will be strictly enforced, it would therefore be advisable to start national validation proceedings in the UPC states of interest, in case the request for unitary effect is rejected by the EPO and by the UPC on appeal. This increases cost and complexity, but avoids loss of patent protection in the territories of interest.
Will the same logic apply to opt-outs?
It is worth noting that the EPO’s strict requirement for correctly naming the proprietor on the UP request importantly differs from the requirement to name the “true proprietor” on applications to opt-out European patent applications or conventionally validated European patents from the jurisdiction of the UPC.
On the UP request form, the EPO requires the proprietor(s) to correspond exactly with those named on the European patent register (with identical addresses and post codes).
In contrast, for an opt-out to be deemed effective (should it ever be challenged), the true proprietor must have been named on the opt-out form. Therefore, an opt-out could be deemed effective even if filed in a name that does not match the proprietor named on the EP register, for instance if ownership of the patent/application has been transferred by virtue of an assignment that has not been recorded on the register.
