One of the important areas of activity for the Unified Patent Court (UPC) will be hearing actions against a decision of the European Patent Office (EPO) in relation to the grant of European patents with Unitary effect (the so-called 'Unitary Patent'). The most relevant of the various actions provided for is the expedited review process if the EPO rejects a request for unitary effect. If the EPO decides to reject such a request for the grant of a Unitary Patent, then the route to appeal will therefore be the UPC, not the EPO. European Patent Attorneys acting as Representatives before the UPC could well find themselves, therefore, acting in such proceedings at the UPC.
The jurisdiction of the UPC over actions against a decision of the EPO relates to the tasks entrusted to the EPO as referred to in Article 9 of Regulation (EU) No. 1257/2012. This includes the process for obtaining the grant of a European patent with Unitary effect (the ‘Unitary Patent’ or UP). The proceedings can be brought under either Rule 87 or Rule 97, Rules of Procedure (RoP) UPC depending on the nature of the action.
Such actions involve Representatives before the UPC, so we may find ourselves taking on such actions if requested to by clients.
Rule 87 concerns actions against a decision of the EPO where the claimant requests annulment or alteration of the decision arising from a task entrusted to the EPO set out in Article 9 of Regulation (EU) No. 1257/2012 (“the Unitary Patent Regulation”). Rule 97 concerns expedited actions to annul a decision of the EPO to reject a request for unitary effect for a European patent.
At the moment, it feels like we may see fewer actions arising from the general tasks assigned to the EPO under Article 9 of the Unitary Patent Regulation, and more likely actions arising from the specific task relating to administering requests for unitary effect.
For context, Article 9 of the Unitary Patent Regulation mandates the EPO:
(a) to administer requests for unitary effect by proprietors of European patents;
(b) to include the Register for unitary patent protection within the European Patent Register and to administer the Register for unitary patent protection;
(c) to receive and register statements on licensing referred to in Article 8, their withdrawal and licensing commitments undertaken by the proprietor of the European patent with unitary effect in international standardisation bodies;
(d) to publish the translations referred to in Article 6 of Regulation (EU) No 1260/2012 during the transitional period referred to in that Article;
(e) to collect and administer renewal fees for European patents with unitary effect, in respect of the years following the year in which the mention of the grant is published in the European Patent Bulletin; to collect and administer additional fees for late payment of renewal fees where such late payment is made within six months of the due date, as well as to distribute part of the collected renewal fees to the participating Member States;
(f) to administer the compensation scheme for the reimbursement of translation costs referred to in Article 5 of Regulation (EU) No 1260/2012;
(g) to ensure that a request for unitary effect by a proprietor of a European patent is submitted in the language of the proceedings as defined in Article 14(3) of the EPC no later than one month after the mention of the grant is published in the European Patent Bulletin; and
(h) to ensure that the unitary effect is indicated in the Register for unitary patent protection, where a request for unitary effect has been filed and, during the transitional period provided for in Article 6 of Regulation (EU) No 1260/2012, has been submitted together with the translations referred to in that Article, and that the EPO is informed of any limitations, licences, transfers or revocations of European patents with unitary effect
The EPO has also provided commentary and guidance on these procedures of the UPC under Rule 87 and Rule 97 RoP UPC here.
Rule 87 proceedings for annulling or altering a decision of the EPO
The general power for the UPC to reverse decisions of the EPO appears to be open to a patent proprietor as well as other persons, however, if the claimant is not the patent proprietor, then a statement must be filed to provide an explanation of why the claimant is adversely affected by the decision of the EPO and entitled to start proceedings (Rule 88.2(b) RoP UPC).
Note that decisions with respect to requests for unitary effect are subject to the expedited procedure under Rule 97 RoP UPC.
Such actions may be brought according to Rule 87 RoP UPC on the grounds of:
(a) infringement of Regulation (EU) No 1257/2012 or of Regulation (EU) No 1260/2012 or of any rule of law relating to their application;
(b) infringement of any of the implementing rules of the European Patent Office for carrying out the tasks referred to in Article 9(1) of Regulation (EU) No 1257/2012;
(c) infringement of an essential procedural requirement;
(d) misuse of power.
Once such an action has been filed at the UPC, it has a suspensive effect on the decision of the EPO, consequently acting as a form of appeal. Such actions must be filed within two months of service of the decision of the EPO. The procedure comprises a written phase (where the EPO may undertake an interlocutory review), followed by an interim procedure (optionally including an interim conference); followed by an oral procedure which may include an oral hearing (requested by the claimant or the Court itself). Any defects in the written submissions can be corrected within 14 days of the service of a notification of the defects.
The procedure provides for the option of an interlocutory review by the EPO within two months of the date of receipt of the action. If this process does complete with rectification of the EPO decision in question, the action is transferred to a panel of the Central Division of the UPC (or to a single judge if requested by the claimant).
The procedure envisages the judge-rapporteur being able to invite further submissions with a time period to be specified, as well as the optional interim conference. Oral proceedings may be requested by the claimant or appointed by the judge-rapporteur.
The final decision arising from the proceedings under Rule 87 RoP UPC may be appealed by a party adversely affected within 15 days of the service of the Court’s decision (note this does not consider the details of the appeals process, i.e. with or without leave to appeal etc.).
Rule 97 actions to annul a decision of the EPO to reject a request for unitary effect
Rule 97 provides that a proprietor of a patent whose request for unitary effect has been rejected by the EPO can file an action to request annulment of the decision within three weeks of service of the decision of the EPO.
The procedure under Rule 97 RoP UPC is “expedited” and therefore does not correspond to the general procedure outlined in the preceding Rules 85, 88 (except as provided for in Rule 97.2), 89 and 91 to 96 for generic actions to challenge decisions of the EPO. The only exception is in the content of statement of claim being filed (“the Application”) in terms of the details of the case (Rule 88.2(a), (c), (d) and (g) to (j)).
There is no option to select a panel or a single judge and there is no possibility for interlocutory review by the EPO (Rule 85.2 RoP UPC). Instead, the action is forwarded by the Registry to the “standing judge” of the Central Division. The standing judge then also has three weeks to decide on the action from the date of receipt at the Registry.
A subsequent appeal by either the patent proprietor or the President of the EPO must be filed within three weeks of the service of the decision of the standing judge. Again, the appeal process requires the standing judge of the UPC Court of Appeal to consider the matter and reach a decision within three weeks of the receipt of the appeal by the Registry of the UPC.
If you have any questions about UPC procedure and practices, please contact Nick Bassil or your usual Kilburn & Strode advisor. Kilburn & Strode has Representatives before the UPC amongst its European Patent Attorneys able to to handle all such actions described above.