Re-establishment of Unitary Patent Rights
What to do if key deadlines are missed

In this final article in our series of articles about the IP transactions aspects of UPs, we consider what’s new, unusual or otherwise important to know about re-establishing UP rights where key deadlines are missed.

Where the deadline for requesting a Unitary Patent has been missed 

The mechanics of the prosecution of European patent applications up to grant remains unchanged by the new Unitary Patent (UP) system – an applicant obtains a European patent by filing an application at the EPO, which will be examined in the normal, established manner.  A UP needs to be requested within one month of the grant of a European Patent. No extensions are available to this one-month term. This is much shorter than the timeframe for requesting national validation, which as readers will know is three months from grant.

Within the one-month period it is also necessary to translate the patent specification from the language of the EPO proceedings into a second language, into any other official language of the EU if the language of the proceedings was English, or into English if the language of the proceedings was French or German. If a translation has still not been made within this one-month period, the applicant can still in any case file the request for a UP, and the EPO will then set a further one-month deadline in which to file the translation.

Since a simple machine translation is not acceptable, and non-machine translations are needed, it is quite possible that the deadline for filing the translation may be missed inadvertently. Unfortunately, the remedy of re-establishment of rights is not available for this translation-related missed deadline. All is not lost, however, since there may still be time to meet the three-month deadline for requesting national validation and obtain protection via that traditional route. Thus, the patent proprietor could still obtain a bundle of national patents, rather than the desired UP.

The above is to be contrasted with the situation where the one-month deadline for requesting a UP is completely missed in its entirety – i.e. no request at all was filed within one month from grant. In this scenario it is possible to request re-establishment to rescue the inadvertently lapsed rights through Rule 22(1) UPR (which refers to the EPO’s Rules relating to Regulation (EU) No 1257/2012, which govern certain tasks entrusted to the EPO relating to UPs). This is the traditional approach we know from the EPO, as applied to the new world of requesting a UP at the EPO (and how the EPO then handles renewal fees and assignments for UPs).You must also file the request for unitary effect and pay the prescribed fee within the same two-month period (Rule 22(3) UPR, Article 2(2) of the Rules relating to Fees for Unitary Patent Protection (RFeesUPP)). However, it is crucial to note that the way in which this deadline is calculated is not the same as when re-establishment is requested regarding other missed EPO deadlines. Where the deadline for filing a UP was missed, re-establishment needs to be requested with two months from expiry of the one-month term. This is in stark contrast to what people may be used to, where the deadline for requesting re-establishment at the EPO is two months from “removal of the cause of non-compliance” with the time period in question (which in most cases is two months from when the applicant discovered that the deadline had been mistakenly missed).

If you miss a deadline to request a UP, then Rule 22 UPR applies, however, failures to meet time periods set out in the UPC Rules of Procedure fall under Rule 320, governing re-establishment of rights at the UPC. Those rules do not include the process for applying for a UP (or renewal fees or assignments), as that process is run entirely by the EPO under the UPR. However, if an appeal is to be filed against a decision from the EPO in relation to Rule 22 UPR, that appeal is filed at the UPC. Thus, we may see case law relating to the UPC’s Rule 320, on re-establishment of rights eventually being applied to the EPO’s Rule 22 UPR on re-establishment of rights, when reviewed by the UPC. The UPC also reserves the right to apply all EPO caselaw if it is viewed to be helpful when applying Rule 320 in any scenario, so it remains to be seen how this will work in practice.

The standard to be met for a re-establishment request to succeed is the familiar very high standard, namely, that the missed deadline occurred despite “all due care in the circumstances” having been exercised. This is made even more difficult by the new rigid hard deadline which starts from the end of the one-month term, and not from when the missed deadline was discovered (or whatever the removal of the cause of non-compliance was).

There is always the alternative of requesting national validation, instead of re-establishment (since the re-establishment deadline of “one month from grant plus two months” equates to the deadline for national validation of three months). Also, a large number of countries taking part in the UP should allow later than three months national validation, which in certain circumstances can allow for re-establishment to be requested and if this does not succeed, (late) national validation may be requested.

Where UP renewal fees have not been paid in time

To maintain a UP, in the same way as with classic nationally validated European patents, the patent proprietor will have to pay annual renewal fees. However, whereas, for conventional European patents, several renewal fees, which may vary in amount, have to be paid to different national patent offices operating under different legal requirements (with sometimes rather confusingly differing deadlines), a UP proprietor pays one single renewal fee direct to the EPO, in one currency and under a single legal regime as regards deadlines and admissible means of payment.

The renewal fee will be due at the end of the calendar month containing the anniversary of the filing date. It may be paid up to six months late with a surcharge, hence if a renewal fee is not paid in due time, it may still be paid within six months of the due date, provided that an additional fee is also paid within that period (Rule 13(3) UPR). This provision is identical to the corresponding EPC provision governing payment of renewal fees for pending European patent applications, in Rule 51(2) EPC.

If a renewal fee for a UP has not been paid by the due date, the EPO will, as a courtesy (and in line with its current practice with respect to renewal fees to be paid for European patent applications under Article 86 EPC), inform the proprietor as soon as possible of the option of paying the fee, plus an additional fee, in the six months following the due date. This six-month period, however, will begin to run immediately from the due date.

If the renewal fee is not paid within that additional six-month period, the EPO will send a communication under Rule 112(1) EPC (which applies mutatis mutandis pursuant to Rule 20(2)(d) UPR), notifying the UP proprietor of a loss of rights. If the renewal fee is not paid in that period, then re-establishment will be possible (under Rule 22 UPR), but this will require a demonstration that the deadline was missed in spite of all due care required by the circumstances having been taken. It is worth noting that this high “all due care” threshold is more draconian than the similar situation at some national European patent offices where a lower standard needs to be met for successful re-establishment of rights, for example “reasonable care” in Ireland. From the deadline perspective, any request for re-establishment of rights shall be filed in writing within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit – these are familiar EPO time-limits.

Please let our Transactions Team know if you need any advice or assistance in respect of the re-establishment of UP rights.