EUROPEAN PATENT OFFICE
Information from the EPO
Notice from the European Patent Office dated 13 November 2024 concerning the implementation of the 14th package of EU sanctions against Russia in procedures related to the Unitary Patent and the associated amendment to the Rules relating to Unitary Patent Protection
Background
1. On 24 June 2024, the Council of the European Union (EU) adopted a 14th package of sanctions against Russia. Council Regulation (EU) No 833/2014 of 31 July 2014 concerning restrictive measures in view of Russia's actions destabilising the situation in Ukraine, as amended by Regulation (EU) 2024/1745, now includes an Article 5s on the handling of intellectual property rights.
2. Article 5s(2) provides that EU Member States, in their capacity as contracting states to the European Patent Convention (EPC) and in fulfilling their international obligations undertaken in the EPC, must use best efforts to ensure that the European Patent Office (EPO) refuses requests for unitary effect within the meaning of Regulation (EU) No 1257/2012 of the European Parliament and of the Council that are filed by Russian nationals or natural persons residing in Russia, or by legal persons, entities or bodies established in Russia, including if jointly filed by a Russian national or natural persons residing in Russia, legal persons, entities or bodies established in Russia with one or more non-Russian natural or legal person resident or established outside of Russia. Pursuant to Article 5s(5), Article 5s(2) does not apply to nationals of an EU Member State, of an EEA country member or of Switzerland or to natural persons having a temporary or permanent residence permit in an EU Member State, in an EEA country member or in Switzerland.
3. Following publication of the EU's 14th package of sanctions against Russia, the President of the EPO decided under Rule 3 of the Rules relating to Unitary Patent Protection (hereinafter "UPR") to take the precaution of staying proceedings for the registration of unitary effect in the Register for unitary patent protection ex officio where the request for unitary effect is/was filed or co-filed by natural or legal persons falling under the scope of the sanctions package (see the notice from the EPO dated 10 July 2024 concerning the staying of proceedings for the registration of unitary effect as a precautionary measure due to the EU's 14th package of sanctions against Russia, OJ EPO 2024, A70).
Amendment to Rule 5(2) UPR and resumption of stayed registration proceedings
4. Rule 5(2) UPR has so far provided that unitary effect is registered only where the European patent has been granted with the same set of claims for all the participating member states.
5. By decision SC/D 1/24 dated 13 November 2024, the Select Committee of the Administrative Council decided to amend Rule 5(2) UPR so as to add an express legal basis in the UPR for the EPO to register unitary effect only where the proprietor of the European patent is not subject to the specific restrictive measure laid down in Article 5s(2) Regulation (EU) No 833/2014 as amended by Regulation (EU) 2024/1745, having regard to the exemptions under Article 5s(5).
6. Amended Rule 5(2) UPR reads as follows: "Unitary effect shall be registered only if (a) the European patent has been granted with the same set of claims in respect of all the participating Member States, and (b) the proprietor of the European patent is not subject to the restrictive measure laid down in Article 5s(2) of Regulation (EU) No 833/2014 as amended by Regulation (EU) No 2024/1745, having regard to Article 5s(5) of that amended Regulation". It enters into force on 15 November 2024 and gives the EPO a legal basis for rejecting requests for unitary effect under Rule 7(2) UPR where the proprietor of the European patent falls under the scope of Rule 5(2)(b) UPR.
7. Before the EPO rejects a request for unitary effect on the basis of Rule 7(2) UPR, it will give the requesting proprietor of the European patent the opportunity to comment, i.e. send out at least one communication inviting the proprietor to comment under Article 113(1) EPC, which applies pursuant to Rule 20(1) UPR (for the common procedure under Rule 7 UPR, see also document SC/D 1/15, point 4), and, where applicable, to invoke any of the exceptions referred to in Article 5s(5) of Regulation (EU) No 833/2014.
8. Amended Rule 5(2) UPR applies to requests for unitary effect pending on the date of its entry into force and to those filed on or after that date. This means that, as pending requests for unitary effect, the requests in respect of which the EPO has stayed registration proceedings as a precautionary measure are covered by the amended rule.
9. Amended Rule 5(2) UPR will be automatically repealed, i.e. cease to have effect, on the date Article 5s(2) of Regulation (EU) No 833/2014 as amended by Regulation (EU) 2024/1745 ceases to have effect and will be replaced by Rule 5(2) UPR as in force prior to the amendment.
10. The proprietors concerned are hereby informed that registration proceedings which have been stayed in accordance with the notice from the EPO dated 10 July 2024 concerning the staying of proceedings for the registration of unitary effect as a precautionary measure due to the EU's 14th package of sanctions against Russia (OJ EPO 2024, A70) are to be resumed as of the date of entry into force of amended Rule 5(2) UPR, i.e. 15 November 2024.