SC/10/14 e 141320004

SC/10/14

Orig.: en

Munich, 06.06.2014

SUBJECT: Rules relating to unitary patent protection - revised version

SUBMITTED BY: President of the European Patent Office

ADDRESSEES: Select Committee of the Administrative Council (for decision)

SUMMARY

Implementation at the European Patent Office of Regulations (EU) No 1257/2012 and No 1260/2012.

This document follows document SC/3/14 dated 7 March 2014 and takes into account the comments and suggestions made at the 7th meeting of the Select Committee of 26 March 2014. It contains a revised and clean version of the Rules relating to Unitary Patent Protection. The amendments to SC/3/14 are indicated by grey hatching in Annex 1. The grey hatchings in Rules 1 to 6 show the amendments already contained in document SC/3/14 with the exception of Rule 1(2) where a new amendment has been added. The provisions on the compensation scheme (Rules X, Y, Z, W including the explanatory remarks of document SC/35/13 Rev. 1) have been inserted in Part II, as new Chapter II (see new Rules 8 to 11).

This document has been issued in electronic form only.

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TABLE OF CONTENTS

Subject Page

PART I INSTITUTIONAL PROVISIONS 2

SUBJECT MATTER 2 CHAPTER I

Rule 1 Subject matter 2

SELECT COMMITTEE OF THE ADMINISTRATIVE COUNCIL 4 CHAPTER II

Rule 2 Competences and duties 4

FUNCTIONS AND POWERS OF THE PRESIDENT OF THE EPO CHAPTER IIIAND SPECIAL DEPARTMENTS OF THE EPO 8

Rule 3 Functions and powers of the President of the European Patent Office 8

Rule 4 Unitary Patent Protection Division 10

PART II PROCEDURES TO BE CARRIED OUT BY THE EUROPEAN PATENT OFFICE UNDER REGULATIONS (EU) NO 1257/2012 AND NO 1260/2012 14

THE REQUEST FOR UNITARY EFFECT 14 CHAPTER I

Rule 5 General 14

Rule 6 Requirements of the request for unitary effect 18

Rule 7 Examination of the request by the European Patent Office 20

COMPENSATION SCHEME 24 CHAPTER II

Rule 8 Definition and beneficiaries 24

Rule 9 Request for compensation 28

Rule 10 Examination of the request and grant of compensation 30

Rule 11 Level of compensation 32

LICENCES OF RIGHT 34 CHAPTER III

Rule 12 Filing of the statement by the patent proprietor 34

RENEWAL FEES 38 CHAPTER IV

Rule 13 Payment of renewal fees for European patents with unitary effect 38

LAPSE 44 CHAPTER V

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Rule 14 Lapse 44

PART III INFORMATION TO THE PUBLIC 46

REGISTER FOR UNITARY PATENT PROTECTION 46 CHAPTER I

Rule 15 Establishment of the Register for unitary patent protection 46

Rule 16 Entries in the Register for unitary patent protection 48

PUBLICATIONS 60 CHAPTER II

Rule 17 European Patent Bulletin and Official Journal of the European Patent Office 60

Rule 18 Publication of translations 62

Rule 19 Inclusion of decisions of the Unified Patent Court in the files 64

PART IV COMMON PROVISIONS 66

Rule 20 Common provisions governing procedure 66

Rule 21 Oral proceedings 74

Rule 22 Re-establishment of rights 76

Rule 23 Form of decisions 78

Rule 24 Interlocutory revision 80

PART V FINANCIAL ISSUES 82

Rule 25 Cover for expenditure incurred by the European Patent Office 82

ANNEX 1 SC/10/14 SHOWING ALL CHANGES 84

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RULES

relating to Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection and to Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of

unitary patent protection with regard to the applicable translation arrangements

(hereinafter "Rules relating to Unitary Patent Protection")

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PART I INSTITUTIONAL PROVISIONS

SUBJECT MATTER CHAPTER I

Rule 1 Subject matter

(1) The participating Member States hereby entrust the European Patent Office with the tasks referred to in Article 9, paragraph 1, Regulation (EU) No 1257/2012. In carrying out these tasks, the European Patent Office shall apply the present Rules and shall be bound by decisions handed down by the Unified Patent Court in actions brought under Article 32, paragraph 1(i), Agreement on a Unified Patent Court.

(2) In case of conflict between the provisions of the present Rules and Union law,

including Regulation (EU) No 1257/2012 and Regulation (EU) No 1260/2012, the provisions of Union law shall prevail.

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Rule 1 – Subject matter

Article 142(1) EPC stipulates that any group of contracting states may provide by a 1.special agreement that a European patent granted for those states has a unitary character throughout their territories. Article 1 Regulation (EU) No 1257/2012 provides that the regulation constitutes a special agreement within the meaning of Article 142(1) EPC. Furthermore, Article 3(2) Regulation (EU) No 1257/2012 holds that a European patent with unitary effect has a unitary character. Therefore, in accordance with Article 142(2) EPC, the provisions of Part IX EPC, Special Agreements, apply.

The group of contracting states within the meaning of Article 142(1) EPC may give 2.the European Patent Office (hereinafter "EPO") additional tasks (see Article 143(1) EPC). Special departments common to the contracting states in the group may be set up within the EPO to carry out these additional tasks (see Article 143(2) EPC). In accordance with these principles, proposed Rule 1(1) defines the subject matter of the present rules, which is to lay down the provisions required to implement the tasks entrusted to the EPO under Regulations (EU) No 1257/2012 and (EU) No 1260/2012. These rules are referred to as the "Rules relating to Unitary Patent Protection", as reflected in the title.

Paragraph 1 of Rule 1 holds that the additional tasks as provided for in Regulation 3.(EU) No 1257/2012 are entrusted to the EPO by virtue of the present rules. The EPO, in carrying out these tasks, will be bound by decisions handed down by the Unified Patent Court (UPC) in actions brought under Article 32(1)(i) Agreement on a Unified Patent Court.

Proposed Rule 1(2) contains a conflict rule modelled on Article 164(2) EPC. It 4.guarantees that Union law, including the provisions of Regulations (EU) No 1257/2012 and No 1260/2012 take precedence over the provisions of the present rules. Where an interpretation of the present provisions runs counter Union law, including the two regulations, that interpretation cannot be followed and the EPO will have to provide an alternative one that complies with Union law in order to resolve the conflict.

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SELECT COMMITTEE OF THE ADMINISTRATIVE COUNCIL CHAPTER II

Rule 2 Competences and duties

(1) The Select Committee of the Administrative Council shall be competent amend (a) the present Rules; (b) the Rules relating to Fees; (c) other rules or decisions of a financial or budgetary nature; (d) its Rules of Procedure. (2) The Select Committee shall ensure the governance and supervision of the

activities related to the tasks entrusted to the European Patent Office in accordance with Rule 1, paragraph 1.

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Rule 2 – Competences and duties of the Select Committee

At their inaugural meeting of 20 March 2013, the participating member states 1.established the Select Committee of the Administrative Council of the European Patent Organisation within the meaning of Article 145(1) EPC and in accordance with Article 9(2) Regulation (EU) No 1257/2012.

Article 145(2) EPC provides that the powers and functions of the Select 2.Committee of the Administrative Council will be determined by the group of contracting states referred to in Article 142(1) EPC.

Pursuant to Article 9(2) Regulation (EU) No 1257/2012, the participating member 3.states will ensure compliance with said regulation in fulfilling their international obligations undertaken in the EPC and will co-operate to that end. Moreover, in their capacity as contracting states to the EPC, the participating member states will ensure the governance and supervision of the activities related to the tasks referred to in Article 9(1) of the regulation and will ensure the setting of the level of renewal fees in accordance with Article 12 of the regulation and the setting of the share of distribution of the renewal fees in accordance with Article 13 of the regulation. To that end they will set up a Select Committee of the Administrative Council of the European Patent Organisation within the meaning of Article 145 EPC.

Mirroring the competences of the Administrative Council as provided for in the 4.EPC (see Articles 33(1)(2) and 46 EPC), it is proposed that the Select Committee should be competent to amend the present rules, the Rules relating to Fees, other rules or decisions of a financial or budgetary nature and its own rules of procedure. The wording used in proposed paragraph 1 corresponds to the one of Article 9(5) of the Rules of procedure of the Select Committee.

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Paragraph 2 stipulates that the Select Committee will ensure the governance and 5.supervision of the activities related to the tasks entrusted to the EPO, in accordance with Article 9(2) Regulation (EU) No 1257/2012 and Article 145(1) EPC.

The membership, chairmanship, voting rights and all other issues related to the 6.procedures and functioning of the Select Committee are laid down in the Rules of Procedure of the Select Committee.

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FUNCTIONS AND POWERS OF THE PRESIDENT OF THE EPO AND CHAPTER IIISPECIAL DEPARTMENTS OF THE EPO

Rule 3 Functions and powers of the President of the European Patent Office

The Unitary Patent Protection Division referred to in Rule 4 shall be managed by the President of the European Patent Office, who shall be responsible for its activities to the Select Committee of the Administrative Council. To this end, Article 10, paragraphs 2 and 3, EPC shall apply mutatis mutandis.

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Rule 3 – Functions and powers of the President of the European Patent Office

Proposed Rule 3 reiterates and clarifies the President's management functions as 1.provided for in the EPC: it sets out the power to manage, i.e. direct the special department established under Article 143 EPC which is in fact the Unitary Patent Protection Division under Rule 4(1). The tasks entrusted to the EPO under Rule 1(1) will be carried out under the responsibility of this division.

The proposed Rule also reflects the principle set out in Article 145(1) EPC 2.according to which the President of the EPO is responsible for the activities of the Unitary Patent Protection Division to the Select Committee of the Administrative Council (see also Article 10(1) EPC).

In accordance with Article 143(2) EPC, Article 10(2) and (3) EPC shall apply 3.mutatis mutandis.

Accordingly, the President of the EPO will in particular take all necessary steps to 4.ensure the functioning of the Unitary Patent Protection Division, including the adoption of internal administrative instructions and information to the public (see Article 10(2)(a) EPC). He will also have the possibility to submit to the Select Committee any proposal for amending the present Rules or for decisions which come within the competence of the Select Committee (see Article 10(2)(c) EPC). This is, of course, without prejudice to the possibility of the participating member states to submit any proposal to the Select Committee in accordance with Article 8(2) of the Rules of Procedure of the Select Committee. Furthermore, a management report will have to be submitted each year by the President of the EPO to the Select Committee (See Article 10(2)(e) EPC).

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Rule 4 Unitary Patent Protection Division

(1) A Unitary Patent Protection Division is hereby established within the European Patent Office as a special department within the meaning of Article 143, paragraph 2 EPC.

(2) The tasks entrusted to the European Patent Office in accordance with Rule 1,

paragraph 1, shall be carried out under the responsibility of the Unitary Patent Protection Division.

(3) Decisions of the Unitary Patent Protection Division shall be taken by one legally

qualified member. (4) The President of the EPO may entrust to employees who are not legally qualified

members the execution of duties falling to the Unitary Patent Protection Division, and involving no legal difficulties.

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Rule 4 – Unitary Patent Protection Division

Under Article 143(1) EPC, the group of Contracting States having availed itself of 1.the authorisation provided for in Article 142(1) EPC, may give additional tasks to the EPO. According to Article 143(2) EPC, special departments common to the group of Contracting States may be set up within the EPO in order to carry out these additional tasks. Moreover, Article 143(2) EPC lays down that the President of the EPO shall direct such special departments and that Article 10(2) and (3) EPC shall apply mutatis mutandis. Finally, pursuant to Article 145(1) EPC, the Select Committee of the Administrative Council supervises the activities of the special departments set up under Article 143(2) EPC.

It is proposed to set up such a special department and to name it "Unitary Patent 2.Protection Division". Such a special department will be responsible for the additional tasks referred to in Article 9, paragraph 1, Regulation (EU) No 1257/2012 and entrusted to the EPO under Rule 1(1) by the participating member states. The departments referred to in Article 15 EPC are not responsible for these additional tasks lying outside the normal EPO grant procedure. Therefore, there is a need to set up a special department. This will clarify that the departments entrusted with the procedures laid down in the EPC, namely the Search, Examining, Opposition and Legal Divisions as well as the Boards of Appeal will not have any responsibility when it comes to the unitary patent. In particular, actions against decisions of the Unitary Patent Protection Division will have to be brought before the Unified Patent Court (see Articles 32(1)(i) and 47(7) UPC Agreement) and not before the EPO Boards of Appeal.

Given the predominantly legal nature of the decisions to be taken by the Unitary 3.Patent Protection Division, it is proposed that its decisions be taken by one legally qualified member (see also Article 20(2) EPC). This is in line with Article 8(6) UPC Agreement which lays down that any panel of the central division dealing with actions under Article 32(1)(i) UPC Agreement shall sit in a composition of (three) legally qualified judges.

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Paragraph 4 foresees that the President of the EPO may entrust to employees 4.who are not legally qualified members (i.e. formalities officers) the execution of individual duties falling to the Unitary Patent Protection Division, and involving no legal difficulties. Accordingly, certain aspects of the procedures may be delegated to formalities officers under the conditions to be determined by the President of the EPO, e.g. where a request is not disputed or where a task does not involve complex legal questions.

No additional administrative infrastructure will be required for the Unitary Patent 5.Protection Division. It will in fact be a virtual division in the sense that its staff will be the existing staff of the Legal Division under Article 20 EPC which deals with tasks identical or similar to those for which the Unified Patent Division will be responsible. The department will thus wear two hats and will take decisions either in its capacity as Unified Patent Protection Division or in its capacity as Legal Division. By using the existing infrastructure and expertise, additional costs can be kept low.

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PART II PROCEDURES TO BE CARRIED OUT BY THE EUROPEAN PATENT OFFICE UNDER REGULATIONS (EU) NO 1257/2012 AND NO 1260/2012

THE REQUEST FOR UNITARY EFFECT CHAPTER I

Rule 5 General

(1) At the request of the proprietor of the European patent, unitary effect shall be registered by the European Patent Office in the Register for unitary patent protection.

(2) Unitary effect shall only be registered if the European patent has been granted

with the same set of claims in respect of all the participating Member States.

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Rule 5 – The request for unitary effect – General I. Requirements for the registration of unitary effect

Paragraph 1 reflects the fact that procedurally, under Regulation (EU) 1.No 1257/2012, unitary patent protection is obtained by a formal request of the proprietor of the European patent to be filed with the EPO.

Paragraph 2 sets out the "substantive" requirements for obtaining unitary effect. It 2.sticks to the wording of Article 3(1) in conjunction with Recital 7 Regulation (EU) No 1257/2012: unitary effect is registered only where the European patent has been granted with the same set of claims for all the 25 participating member states, irrespective of whether these States have ratified the UPC Agreement or not.

The territorial scope of a European patent with unitary effect for which unitary 3.effect is already registered in the Register for unitary patent protection will have to be determined under Article 18(2), second subparagraph, Regulation (EU) No 1257/2012, i.e. by referring to the date of registration. The participating member states in which the European patent with unitary effect has unitary effect under Article 18(2), second subparagraph, Regulation (EU) No 1257/2012 will be indicated in the Register for unitary patent protection for information purposes (see Rule 16(1)(g)).

Where one of the two joint requirements set out in paragraph 2 (i.e. designation of 4.all the participating member states in the granted European patent and same set of claims for all these Member States), or even both, is/are not fulfilled, unitary effect cannot be registered by the EPO (see Article 3(1) and Recital 7 Regulation (EU) No 1257/2012).

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No express authorisation to introduce a specific fee for the request for unitary 5.effect has been included: such a fee would constitute a supplementary formal and financial requirement not provided for by Regulation (EU) No 1257/2012 and could unnecessarily complicate and therefore delay the procedure for requesting unitary effect (it would inevitably lead to instances of non-payment, or partial payment, or late payment, and thereby necessitate remedies, surcharge, sanctions such as the request deemed not to have been filed, etc.) when, in fact, the procedure should be kept as simple and attractive as possible.

II. Multiple proprietors in respect of the same or different participating member states

Unitary effect can also be requested where a European patent was granted to 6.multiple proprietors in respect of the same or different participating member states as long as said European patent has been granted with the same set of claims in respect of all the participating member states. Procedurally, the request will then have to be filed via the common representative referred to in Rule 151 EPC (see Rule 20(2)(l), which provides that Rule 151 EPC applies mutatis mutandis).

[In order to ensure that all proprietors in fact agree to obtain a European patent 7.with unitary effect instead of a classic European patent to be validated in the different EPC contracting states, a declaration is to be filed under Rule 6(2)(a) stating that all the proprietors consent to the making of the request. If not filed within the one-month period of Rule 6(1), the declaration may still be filed within a non-extendable period of one month following the invitation of the EPO to correct the deficiency under Rule 7(3). If the deficiency is not corrected in due time, the EPO will reject the request for unitary effect.]

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Rule 6 Requirements of the request for unitary effect

(1) The request for unitary effect shall be filed with the European Patent Office no later than one month after publication of the mention of grant of the European patent in the European Patent Bulletin. [It may not be withdrawn].

(2) The request for unitary effect shall be filed in writing in the language of the

proceedings and shall contain: (a) particulars of the proprietor of the European patent making the request (hereinafter

"the requester") as provided for in Rule 41, paragraph 2(c), EPC [and, in case of multiple proprietors in respect of the same or different participating Member States, a declaration that all the proprietors consent to the making of the request];

(b) the number of the European patent to which unitary effect shall be attributed; (c) where the requester has appointed a representative, particulars as provided for in

Rule 41, paragraph 2(d), EPC;

(d) a translation of the European patent as required under Article 6, paragraph 1, Regulation (EU) No 1260/2012, as follows:

where the language of the proceedings is French or German, a full translation of the specification of the European patent into English; or

where the language of the proceedings is English, a full translation of the specification of the European patent into any other official language of the European Union.

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Rule 6 – Requirements of the request for unitary effect

Rule 6 sets out the formal requirements for obtaining unitary effect, as opposed to 1.the "substantive" requirements set out in Rule 5(2).

Paragraph 1 of the proposed rule, in accordance with Article 9(1)(g) Regulation 2.(EU) No 1257/2012, stipulates a time limit of one month after the mention of the grant is published in the European Patent Bulletin for filing the request for unitary effect. [The prohibition to withdraw the request provides legal certainty and avoids difficulties with respect to the conditions of withdrawal and the possibility of subsequently filing a new request.]

In order to avoid any formal deficiencies, the EPO intends to provide appropriate 3.(electronic) forms for filing the request for unitary effect which will contain checkboxes alerting the patent proprietor to all the relevant formal requirements.

Should the patent proprietor omit to file a request for unitary effect, i.e. file no 4.request for unitary effect with the EPO, he may obtain re-establishment of rights in respect of the period specified in Rule 6(1). The request for re-establishment must however be filed within two months of expiry of the aforementioned period, by analogy with the re-establishment of rights for the priority period under Article 87(1) EPC (see Rule 22(2)) and the omitted act, i.e. the filing of the request for unitary effect, must also be completed in this period (Rule 22(3)). For a request for unitary effect filed too late, i.e. after the expiry of the one-month period specified in Rule 6(1), see the explanatory remarks on Rule 7 below.

Paragraph 2 specifies the language to be used in accordance with Article 9(1)(g) 5.Regulation (EU) No 1257/2012, namely the language of proceedings, as well as the requirement under the EPC for the written form. Paragraph 2(a) is required so that the EPO can check the requester's identity, i.e. whether he is in fact the patent proprietor. [As regards the declaration to be filed in case of multiple proprietors in respect of the same or different participating member states, see the explanatory remarks under Rule 5.] The number of the European patent is required to identify the patent to which unitary effect will be attributed. Paragraph 2(c) is needed in case a representative has been appointed. Paragraph 2(d) sets out the transitional translation requirement of Article 9(1)(h) Regulation (EU) No 1257/2012 and Article 6(1) Regulation (EU) No 1260/2012. It will have to be deleted as soon as the transitional period is terminated.

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Rule 7 Examination of the request by the European Patent Office

(1) If the requirements under Rule 5, paragraph 2, are met and the request for unitary effect complies with Rule 6, the European Patent Office shall register the unitary effect in the Register for unitary patent protection and communicate the date of this [the] registration to the requester.

(2) If the requirements under Rule 5, paragraph 2, are not met or the request for

unitary effect does not comply with Rule 6, paragraph 1, the European Patent Office shall reject the request.

(3) If the requirements under Rule 5, paragraph 2, are met and the request for unitary

effect complies with Rule 6, paragraph 1, but fails to comply with the requirements of Rule 6, paragraph 2, the European Patent Office shall invite the requester to correct the deficiencies noted within a non-extendable period of one month. If the deficiencies are not corrected in due time, the European Patent Office shall reject the request.

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Rule 7 – Examination of the request by the EPO

In view of the overriding need for legal certainty and in the interest of clarity, the 1.procedure for requesting and registering unitary effect should be as straightforward as possible. In particular, the overall duration of this procedure should be as short as possible bearing in mind that the public, patent offices, courts (including the Unified Patent Court) and other national authorities should know as soon as possible whether unitary effect will be attributed to a granted European patent. Furthermore, the participating member states have a particular interest in a swift registration of the unitary effect since they have to ensure, where the unitary effect of a European patent has been registered, that the European patent is deemed not to have taken effect as a national patent in their territory (see Article 4(2) Regulation (EU) No 1257/2012). On the other hand, patent proprietors requesting unitary effect do have a legitimate interest in obtaining possibilities to remedy minor formal deficiencies contained in the request and in getting duly heard under Article 113(1) EPC, as is the case for any other procedure governed by the EPC and with which they are acquainted.

Paragraph 1 governs the case where all requirements, both formal and 2.substantive as provided for under Rules 5(2) and 6, are met. In this case, the EPO can register the unitary effect in the Register for unitary patent protection and communicate the date of this registration to the patent proprietor.

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Paragraph 2 governs three scenarios: (a) the request is filed within the one-month 3.period of Rule 6(1) and the substantive requirements of Rule 5(2) are not met; (b) the request is filed after the expiry of the one-month period of Rule 6(1) and the substantive requirements of Rule 5(2) are met; (c) the request is filed after the expiry of the one-month period of Rule 6(1) and the substantive requirements of Rule 5(2) are not met. The fourth possible scenario, in which no request for unitary effect has been filed by the patent proprietor, is not governed by paragraph 2 since the EPO cannot issue a rejection in the absence of a request. See the explanatory remarks on Rule 6 for more information on this scenario.

In cases (a) to (c), the EPO will reject the request for unitary effect without setting 4.a further time limit for correcting deficiencies. Before it does so, it will have to give the patentee the opportunity to comment, i.e. send out at least one communication inviting the requester to comment under Article 113(1) EPC, which applies pursuant to Rule 20(1). It is proposed that in case (b) the requester should be given the possibility to request re-establishment of rights in respect of the one-month period specified in Rule 6(1) within two months of expiry of that period (see Rule 22(2)). Procedurally speaking, the EPO may then, together with the rejection of the request, inform the patent proprietor that he may still request re-establishment of rights in respect of the period specified in Rule 6(1) within two months of the expiry of that period.

Paragraph 3 governs the case where the one-month period of Rule 6(1) and the 5.substantive requirements of Rule 5(2) are met but where any of the formal requirements of Rule 6(2) have not been fulfilled. In such a case, the EPO would -– as usual in proceedings before the EPO – give the requester the opportunity to remedy the deficiency within a non-extendable period of one month. If the requester fails to observe this period, re-establishment of rights is ruled out, no other legal remedy is available and the request for unitary effect is rejected (see Rule 22(6)), i.e. the EPO takes a final decision against which an action can be brought before the Unified Patent Court (see Article 32(1)(i) in conjunction with Article 66 Agreement on a Unified Patent Court).

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COMPENSATION SCHEME CHAPTER II

Rule 8 Definition and beneficiaries

(1) Proprietors of European patents with unitary effect for which the European patent application was filed in an official language of the European Union other than English, French or German shall be entitled to compensation for translation costs if their residence or principal place of business is in a member state of the European Union and they are an entity or a natural person referred to in paragraph 2.

(2) Compensation for translation costs shall be granted, on request, to a patent

proprietor falling within one of the following categories: (a) small and medium-sized enterprises as defined in European Commission

recommendation 2003/361/EC dated 6 May 2003; (b) natural persons; or (c) non-profit organisations as defined in Article 2, paragraph 1(14) of Regulation (EU)

No 1290/2013, universities and public research organisations. (3) If the patent has multiple proprietors, compensation will be granted only if each

proprietor is an entity or a natural person referred to in paragraph 2. (4) If the European patent application or the European patent was transferred before a

request for unitary effect was filed, compensation will be granted only if both the initial applicant and the proprietor of the patent fulfil the conditions referred to in paragraphs 1 and 2.

(5) The compensation scheme provided for in paragraph 1 shall also apply to Euro-

PCT applications originally filed at a receiving office in an official language of the European Union other than English, French or German.

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Rule 8 – Compensation scheme: definition and beneficiaries

Under Rule 8(1), the scheme is open to proprietors of European patents with 1.unitary effect granted on the basis of an application they themselves have filed in an EU official language other than English, French and German (the EPO official languages) if their residence or principal place of business is in an EU member state.

Besides geographical location and language used, beneficiaries of the scheme 2.must also be in one of the following categories:

(a) small and medium-sized enterprises (SMEs); (b) natural persons; or (c) non-profit organisations, universities and public research organisations.

The definition of SMEs is that set out in European Commission recommendation 3.

2003/361/EC of 6 May 2003 on micro, small and medium-sized enterprises. The recommendation defines an enterprise as any entity engaged in an economic activity, irrespective of its legal form. The category of micro, small and medium sized enterprises (SMEs) is made up of enterprises which employ fewer than 250 persons, which have an annual turnover not exceeding EUR 50m or an annual balance-sheet total not exceeding EUR 43m, and for which no more than 25% of the capital is held directly or indirectly by another company which is itself not an SME.

The definition of non-profit organisations is that set out in Article 2, 4.paragraph 1(14) of Regulation (EU) No. 1290/2013 laying down the rules for participation in the framework programme for research and innovation. Thus, 'non-profit legal entity' means a legal entity which by its legal form is non-profitmaking or which has a legal or statutory obligation not to distribute profits to its shareholders or individual members.

Universities and public research organisations are not expressly defined in EU 5.texts, so details will be presented in an EPO notice, reflecting these bodies' definitions as set out with a view to the amendment of the scope of application of Rule 6 EPC (cf. CA/97/13 Rev. 1 and the notice from the EPO dated 10 January 2014, OJ EPO 2014, A23).

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To prevent abuse, such as making a natural person or SME a co-proprietor of the 6.

patent in order to qualify for the scheme, Rule 8(3) provides that if there are multiple proprietors, compensation will be granted only if each of them fulfils the eligibility requirements.

The rule's paragraph 1 governs compensation requests submitted by the same 7.entity that filed the patent application; in such cases, the eligibility criteria must be fulfilled when the European patent application is filed. Its paragraph 4 governs those submitted after ownership of the application or patent has changed (e.g. following a transfer or merger); here, compensation will be granted only if both the original applicant and the new owner (for the latter when requesting compensation) fulfil the eligibility criteria as regards not only nationality but also type of entity.

The scheme applies to Euro-direct applications filed at the EPO and also, as 8.expressly stated in Rule 8(5), to Euro-PCT applications originally filed at a PCT receiving office in the 23 countries eligible for the scheme (or the International Bureau) in an EU (but non-EPO) official language. Under Article 153(2) EPC, an international application for which the EPO is a designated or elected office is legally equivalent to a regular European application, and as such is covered by Article 5 of Regulation (EU) No. 1260/2012.

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Rule 9 Request for compensation

(1) The proprietor of a European patent who wishes to benefit from compensation under Rule 8 must file a request for it together with the request for unitary effect referred to in Rule 6.

(2) The request for compensation for translation costs shall contain a declaration that

the proprietor of the European patent is an entity or a natural person referred to in Rule 8, paragraph 2.

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Rule 9 – Request for compensation 1. Proprietors have to file their request for compensation with the EPO after grant of

the European patent, together with their request for unitary effect. That is in line with the texts adopted; under recital 10 of Regulation (EU) No. 1260/2012 the compensation should go to "certain applicants obtaining European patents with unitary effect". Although translation costs will then be reimbursed some time (three to four years) after they were actually incurred, this possibility of subsequent reimbursement shall be seen as an incentive for SMEs to opt for unitary protection.

2. Rule 9 stipulates that the request for compensation must be filed with the EPO at

the same time as the request for registration of unitary effect, i.e. no later than one month after publication of the mention of grant of the European patent in the European Patent Bulletin (see Rule 6); no longer period for filing it is envisaged. The request forms for unitary effect will also include a box for requesting compensation; proprietors will merely have to tick the box.

3. Together with the request for compensation the proprietor must submit a solemn

declaration that he (and the initial applicant, if a transfer of ownership has occurred) fulfils the eligibility requirements under Rule 8. He must make this declaration on an EPO form. The EPO does not plan to require him to provide supporting documents about his status, and will not normally verify the veracity of the declaration. It may however conduct spot checks before granting compensation.

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Rule 10 Examination of the request and grant of compensation

(1) After the European Patent Office has registered the unitary effect of the European patent in the Register for unitary patent protection and has examined the request for compensation, it shall inform the patent proprietor whether that request has been granted or rejected.

(2) Once granted, compensation shall not be rescinded, even if, as a result of

changed circumstances, the proprietor no longer qualifies for it under Rule 8. (3) Should the Office have reason to doubt the veracity of the declaration filed under

Rule 9, paragraph 2, it shall invite the patent proprietor to provide evidence that he fulfils the requirements of Rule 8, paragraph 2. Articles 113(1) and 114 EPC shall apply.

(4) If the Office finds that the compensation was granted on the basis of a false

declaration, it shall invite the patent proprietor to pay, together with the next renewal fee falling due, an additional fee composed of the amount of the compensation paid and an administrative fee as laid down in the Rules relating to Fees. If this additional fee is not paid in due time, the European patent with unitary effect shall lapse under Rule 14.

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Rule 10 – Examination of the request and grant of compensation 1. The EPO will quickly examine requests for compensation according to Rule 10(1)

to make sure that the request for unitary effect has indeed been filed, that all proprietors have made the necessary declaration, and that there are no doubts as to the declaration's veracity. After these simple checks, the EPO will notify the proprietor that it is granting compensation and pay it to him. Compensation cannot be paid until the European patent's unitary effect has been entered in the Register for unitary patent protection. This compensation is to be covered by the renewal fees for European patents with unitary effect, which means that it cannot be granted until unitary effect is registered, as opposed to merely requested.

2. Once compensation is granted, the proprietor will keep it whatever happens to his

status, e.g. he no longer fulfils the SME criteria or assigns his unitary patent to a new proprietor who does not meet the eligibility requirements under Rule 8(2).

3. However, if the EPO has serious doubts about the veracity of the declaration filed

with the compensation request, e.g. because of information from a third party, under Rule 10(3) it could exceptionally review its grant of the compensation, and ask the beneficiary to provide evidence (such as a copy of his balance sheet or a declaration about how many person he employs) that he fulfils the eligibility criteria. Proceedings under Articles 113(1) and 114 EPC would then ensue.

4. If, at the end of these proceedings, the Office believes that a false declaration has

been made, it will inform the beneficiary under Rule 10(4) that it has revised its decision to grant the compensation, and require him to refund the sum paid, in the form of an additional fee when paying the next renewal fee for his unitary patent (possibly within the six-month grace period). This additional fee will be equal to the translation costs paid, plus an administrative fee to cover processing costs. The administrative fee will be laid down, in the rules relating to fees, at 50% of the amount of compensation paid. If this additional fee is not paid in due time, his unitary patent will lapse under Rule 14(1).

5. Decisions taken by the Office in administering the compensation scheme

procedures described above are appealable before the Unified Patent Court.

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Rule 11 Level of compensation

Reimbursement of translation costs shall be made up to a ceiling and paid in the form of a lump sum, in accordance with the Rules relating to Fees. The ceiling shall be fixed on the basis of the average length of a European patent and the average translation cost per page, taking account of the average reduction granted under Rule 6 EPC.

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Rule 11 – Level of compensation 1. The level of compensation is fixed in the form of a lump-sum. The lump sum paid

constitutes the ceiling on the reimbursement of all translation costs, under Article 5(1) of Regulation (EU) No. 1260/2012. For real translation costs below this ceiling, the scheme will bring requesters financial advantages which go beyond what is foreseen in Article 5 of Regulation (EU) No. 1260/2012.

2. The reimbursement ceiling takes account of the average length of European patent

specifications and the average cost of translating a text from one of the 21 EU but non-EPO official languages into English, French or German.

3. Lastly, the level of compensation must take account of the reductions granted on

filing and during examination, under Rule 6 EPC and Article 14 Rules relating to Fees (EPC), for the same categories of applicant.

4. The lump sum fixed in the rules relating to fees (for unitary patent protection) will be

reviewed periodically as further technical progress in machine translation enable applicants to obtain translations more cheaply.

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LICENCES OF RIGHT CHAPTER III

Rule 12 Filing of the statement by the patent proprietor

(1) The proprietor of a European patent with unitary effect may file a statement with the European Patent Office that he is prepared to allow any person to use the invention as a licensee in return for appropriate compensation. In that case, the renewal fees for the European patent with unitary effect which fall due after receipt of the statement shall be reduced; the amount of the reduction shall be fixed in the Rules relating to Fees. The statement shall be entered in the Register for unitary patent protection.

(2) The statement referred to in paragraph 1 may be withdrawn at any time by a

communication to this effect to the European Patent Office. Such withdrawal shall not take effect until the amount by which the renewal fees were reduced is paid to the European Patent Office.

(3) The statement referred to in paragraph 1 may not be filed as long as an exclusive

licence is recorded in the Register for unitary patent protection or a request for the recording of such a licence is pending before the European Patent Office.

(4) No request for recording an exclusive licence in the Register for unitary patent

protection shall be admissible after the statement referred to in paragraph 1 has been filed, unless that statement is withdrawn.

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Rule 12 – Filing of a statement by the patent proprietor

Article 8(1) Regulation (EU) No 1257/2012 provides that the proprietor of a 1.European patent with unitary effect may file a statement with the EPO to the effect that the proprietor is prepared to allow any person to use the invention as a licensee in return for appropriate compensation. Paragraph 2 of that provision specifies that a licence obtained under the Regulation will be treated as a contractual licence. In accordance with Article 11(3) Regulation (EU) No 1257/2012, renewal fees which fall due after receipt of the statement referred to in Article 8(1) of said regulation will be reduced. Recital 15 of the regulation adds that the patent proprietor should get a reduction of the renewal fees as from the time the EPO receives the statement referred to in Article 8(1) of the regulation.

Article 9(1)(c) Regulation (EU) No 1257/2012 provides that the EPO is given the 2.task of receiving and registering the statements on licensing referred to in Article 8 and their withdrawal, and of licensing the commitments undertaken by the proprietor of the European patent with unitary effect in international standardisation bodies.

Proposed Rule 12(1) lays down the procedure for filing the statement referred to in 3.Article 8 Regulation (EU) No 1257/2012 and specifies that the amount of the renewal fee reduction will be fixed in the Rules relating to Fees. Paragraph 2 specifies that the statement can be withdrawn by the proprietor at any time, in line with Article 9(1)(c) Regulation (EU) No 1257/2012. The withdrawal will only take effect if the amount by which the renewal fees were reduced is paid to the EPO.

Paragraph 3 deals with cases where an exclusive licence is recorded in the 4.register. Paragraph 4 specifies that no exclusive licence may be recorded after a statement has been filed, unless it is withdrawn.

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Pursuant to Article 32(1)(h) Agreement on a Unified Patent Court, the Court will 5.have exclusive competence in respect of actions for compensation for licences on the basis of Article 8 Regulation (EU) No 1257/2012. Therefore, in the case of dispute, the Unified Patent Court will have to determine the amount of the appropriate compensation referred to in Article 8 Regulation (EU) No 1257/2012 and Rule 8(1) if a request for same is made by one of the contracting parties to the licence agreement.

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RENEWAL FEES CHAPTER IV

Rule 13 Payment of renewal fees for European patents with unitary effect

(1) Renewal fees for European patents with unitary effect and additional fees for their late payment shall be paid to the European Patent Office. Those fees shall be due in respect of the years following the year in which the mention of the grant of the European patent which benefits from unitary effect is published in the European Patent Bulletin.

(2) A renewal fee for the European patent with unitary effect in respect of the coming

year shall be due on the last day of the month containing the anniversary of the date of filing of the European patent application which led to the European patent with unitary effect. Renewal fees may not be validly paid more than three months before they fall due.

(3) If a renewal fee is not paid in due time, the fee may still be paid within six months

of the due date, provided that an additional fee is also paid within that period. (4) Any renewal fee in respect of a European patent with unitary effect falling due

within three months of the publication of the mention of the grant of the European patent shall be deemed to have been validly paid if it is paid within that period. No additional fee shall be charged in this case.

(5) A renewal fee in respect of a European patent with unitary effect which, by virtue

of the retroactive effect provided for in Article 4(1) Regulation (EU) No 1257/2012, would have fallen due under paragraph 2 in the period starting on the date of publication of the mention of the grant of the European patent in the European Patent Bulletin up to and including the date of the notification of the communication referred to in Rule 7(1) or the notification of the decision of the Unified Patent Court attributing unitary effect shall be due on that latter date. This fee and any renewal fee due within four months of that latter date may still be paid within four months of that latter date without an additional fee. If not paid within this period, paragraph 3 shall apply.

(6) Rule 51, paragraphs 4 and 5 EPC shall apply mutatis mutandis.

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Rule 13 – Payment of renewal fees for European patents with unitary effect

In accordance with Articles 9(1)(e) and 11 Regulation (EU) No 1257/2012, 1.proposed paragraph 1 sets out the obligation to pay the EPO renewal fees and, where applicable, additional fees in the event of their late payment, for the European patent with unitary effect, the amount of the fees being laid down in the Rules relating to Fees. Renewal fees for the European patent with unitary effect shall be due in respect of the years following the year in which the mention of the grant of the European patent which benefits from unitary effect is published in the European Patent Bulletin (see also Article 141(1) EPC).

Proposed paragraph 2 provides for the due date of payment of renewal fees and is 2.almost identical to the wording of Rule 51(1) EPC. Proposed paragraph 3 is fully aligned with Rule 51(2) EPC, which provides for an additional period of six months if the renewal fees have not been paid on or before the due date. Proposed paragraph 4 provides for the safety period of Article 141(2) EPC, although the period is extended to three months in view of the post-grant procedure for requesting unitary effect.

If the renewal fee has not been paid on the due date, the EPO will inform, as a 3.courtesy service (and as is the current practice with respect to renewal fees to be paid for the European patent application under Article 86 EPC), the proprietor of the European patent with unitary effect as soon as possible of the option of paying the fee, plus an additional fee, in the six months following the due date, that period having already begun.

If the renewal fee is not paid within the additional six-month period, the EPO will 4.send a communication under Rule 112(1) EPC (which applies mutatis mutandis pursuant to Rule 20(2)(d)), notifying the proprietor of the European patent with unitary effect of the loss of rights. The communication does not constitute a decision within the meaning of Article 32(1)(i) Agreement on a Unified Patent Court, so an action cannot be brought against it before the Unified Patent Court. Failure to pay the renewal fee within the additional six-month period can be redressed using re-establishment of rights under Rule 22.

Alternatively, if the finding of the EPO causing the loss of rights is inaccurate, a 5.review of the finding can be requested by applying for a decision under Rule 112(2) EPC, said rule applying mutatis mutandis. An action against that decision could then be brought before the Unified Patent Court.

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The computation of time limits is to be effected under Rules 131 and 134 EPC 6.(see Rule 20(2)(g)) in accordance with the current EPO practice: when the due date falls on a date the EPO cannot receive mail within the meaning of Rule 134(1) EPC (which applies mutatis mutandis under Rule 20(2)(g)), the due date is not changed since it does not constitute a period which can be extended. Instead, the last day for valid payment is deferred to the first working day thereafter.

Furthermore, the six-month additional period of Rule 13(3) starts on the last day of 7.the month referred to in Rule 13(2), even if the EPO cannot receive mail on that date because of holidays, mail interruption or strike. However, Rule 134(1) EPC is to be applied to the expiry of the six-month additional period, deferring the last day for valid payment to the first working day.

The six-month period for the payment of a renewal fee with additional fee expires 8.on the last day of the sixth month after the due date (pursuant to Rule 13(2)) and not on the day of that month corresponding in number to the due date (see Rule 131(4) EPC applying mutatis mutandis under Rule 202)(g)). Thus, the calculation is to be made from the last day of the month to the last day of the month (de ultimo ad ultimo, e.g. if the due date is 28 February, then the end of the six-month period will be 31 August and not 28 August). See point 7 above as to the application of Rule 134(1) EPC.

The consequence of non-payment of the renewal fee, and where applicable, 9.additional fee, is the lapse of the European patent with unitary effect in accordance with Article 11(2) Regulation (EU) No 1257/2012 (see Rule 14(1)(b)). The lapse takes effect on the due date.

Proposed paragraph 4 reiterates the content of Article 141(2) EPC and extends 10.the two-month safety period to three months. The three-month period starts on the date of the mention of the grant in the European Patent Bulletin (see Article 97(3) EPC). Consequently, no additional fee will be due where the renewal fee is paid within that period. The course of the six-month period under Rule 13(3) is unaffected: it starts running from the due date. However, Rule 13(4) has the effect that an additional fee under Rule 13(3) does not have to be paid where the renewal fee is paid within the three-month safety period.

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Proposed paragraph 5 covers the case where the renewal fees fall due after the 11.grant of the European patent but before the unitary effect is registered. This could in particular occur in exceptional circumstances where the procedure for registering unitary effect takes a long time owing, for example, to a request for re-establishment of rights or the involvement of the Unified Patent Court. If, at the end of such a procedure, the decision to register unitary effect is finally notified to the patent proprietor by the EPO or the UPC, the European patent with unitary effect takes effect on the date of publication of the mention of the grant of the European patent in the European Patent Bulletin in accordance with Article 4(1) Regulation (EU) No 1257/2012. Owing to this retroactive effect (see Recital 8 Regulation (EU) No 1257/2012), renewal fees are then due for the period starting on the date of publication of the mention of the grant of the European patent in the European Patent Bulletin and up to and including the date of the notification of the communication referred to in Rule 7(1) or the notification of the decision of the Unified Patent Court attributing unitary effect. Hence, by analogy with Rule 51(4) and (5) EPC, which apply mutatis mutandis, the renewal fees can be paid within four months of the notification without any additional fee. If not paid within this period, Rule 13(3) applies, i.e. the fees can still be paid with an additional fee within six months, starting from the date of notification.

Proposed paragraph 6 provides that Rule 51(4) and (5) EPC do apply mutatis 12.mutandis. Rule 51(4) EPC refers to the case where a European patent with unitary effect lapses due to the non-payment of renewal fees and a request for re-establishment of rights is successful. Rule 51(5) governs the analogous situation where a petition for review or a rehearing under Article 81 UPC Agreement is successful.

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LAPSE CHAPTER V

Rule 14 Lapse

(1) A European patent with unitary effect shall lapse: (a) 20 years after the date of filing of the European patent application; (b) if a renewal fee and, where applicable, any additional fee have not been paid in

due time. (2) The lapse of a European patent with unitary effect for failure to pay a renewal fee

and any additional fee within the due period shall be deemed to have occurred on the date on which the renewal fee was due.

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Rule 14 – Lapse

The proposed rule summarises the situations in which the European patent with 1.unitary effect lapses. Paragraph 1(a) of the proposed rule reflects Article 63(1) EPC which provides that the term of the European patent is 20 years from the date of filing of the application. Paragraph 1 (b) covers the case of non-payment in due time of a renewal fee and, where applicable, any additional fee (see Article 11(2) Regulation (EU) No 1257/2012).

It is proposed that the date of effect of the lapse in the case referred to in 2.paragraph 1(b) should be specified: in such a case, the lapse of a European patent with unitary effect is deemed to have occurred on the date on which the renewal fee was due.

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PART III INFORMATION TO THE PUBLIC

REGISTER FOR UNITARY PATENT PROTECTION CHAPTER I

Rule 15 Establishment of the Register for unitary patent protection

(1) The Register for unitary patent protection provided for in Article 9, paragraph 1(b), Regulation (EU) No 1257/2012 is hereby established as a special part of the European Patent Register kept by the European Patent Office under Article 127 EPC.

(2) Entries in the Register for unitary patent protection shall be made in the three official languages of the European Patent Office. In case of doubt, the entry in the language of the proceedings shall be authentic.

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Rule 15 – Establishment of the Register for unitary patent protection

See the explanatory remarks below under Rule 16. 1.

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Rule 16 Entries in the Register for unitary patent protection

(1) The Register for unitary patent protection shall contain the following entries: (a) date of publication of the mention of the grant of the European patent; (b) date of filing of the request for unitary effect for the European patent; (c) particulars of the representative of the proprietor of the European patent as

provided in Rule 41, paragraph 2(d), EPC; in the case of several representatives, only the particulars of the representative first named, followed by the words "and others" and, in the case of an association referred to in Rule 152, paragraph 11, EPC, only the name and address of the association;

(d) date and purport of the decision on the registration of unitary effect for the

European patent; (e) date of registration of the unitary effect of the European patent; (f) date of effect of the European patent with unitary effect pursuant to Article 4,

paragraph 1, Regulation (EU) No 1257/2012; (g) participating Member States in which the European patent with unitary effect has

unitary effect pursuant to Article 18, paragraph 2, Regulation (EU) No 1257/2012; (h) particulars of the proprietor of the European patent with unitary effect as provided

for in Rule 41, paragraph 2(c), EPC; (i) family name, given names and address of the inventor designated by the applicant

for or proprietor of the patent, unless he has waived his right to be mentioned under Rule 20 paragraph 1 EPC;

(j) rights and transfer of such rights relating to the European patent with unitary effect

where the present Rules provide that they shall be recorded at the request of an interested party;

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Rule 16 – Entries in the Register for unitary patent protection I. General

Article 9 Regulation (EU) No 1257/2012 sets out that the participating member 1.states will, within the meaning of Article 143 EPC, give the EPO some additional tasks to be carried out in conformity with the "internal rules" of the EPO. Pursuant to Article 9(1)(b) Regulation (EU) No 1257/2012, these tasks comprise the inclusion of the Register for unitary patent protection within the European Patent Register and the administration thereof. Article 2(e) Regulation (EU) No 1257/2012, specifies that "Register for unitary patent protection means the register constituting part of the European Patent Register in which the unitary effect and any limitation, licence, transfer, revocation or lapse of a European patent with unitary effect are registered."

In accordance with the above provisions, Rule 15 provides that a Register for 2.unitary patent protection is hereby established as an integral but special, i.e. dedicated, part of the present European Patent Register kept by the EPO under Article 127 EPC.

For reasons of legal certainty and transparency for the users, the Register for 3.unitary patent protection will be set up as a separate part of the European Patent Register covering all entries required for the European patent with unitary effect. This will be adequately reflected in the online architecture of the Register for unitary patent protection. Strong interaction between the classical European Patent Register and the Register for unitary patent protection (e.g. by interlinking) will ensure a smooth handling by the users. Appropriate links can also be envisaged to the Register of the Unified Patent Court.

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(k) licensing commitments undertaken by the proprietor of the European patent with unitary effect in international standardisation bodies pursuant to Article 9, paragraph 1(c), Regulation (EU) No 1257/2012, where the proprietor requested their registration;

(l) date of filing and date of withdrawal of the statement provided for in Rule 12; (m) date of lapse of the European patent with unitary effect; (n) date of receipt of a declaration of surrender of the proprietor of the European

patent with unitary effect; (o) data as to the payment of renewal fees for the European patent with unitary effect,

including, where applicable, data on the payment of an additional fee pursuant to Rule 13(3);

(p) a record of the information communicated to the European Patent Office

concerning proceedings before the Unified Patent Court; (q) a record of the information communicated to the European Patent Office by the

central industrial property offices, courts and other competent authorities of the participating Member States;

(r) date and purport of the decision on the validity of a European patent with unitary

effect taken by the Unified Patent Court; (s) date of receipt of request for re-establishment of rights; (t) refusal of request for re-establishment of rights; (u) date of re-establishment of rights; (v) dates of interruption and resumption of proceedings;

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II. Entries in the Register for unitary patent protection

The Register for unitary patent protection has to contain all the entries expressly 4.set out in Regulation (EU) No 1257/2012, in particular the fact that unitary effect has been registered and the date of that registration. However, since the list of entries to the Register for unitary patent protection of Regulation (EU) No 1257/2012 is far from being exhaustive, it is proposed to set up a list of additional entries, the provision serving as model being Rule 143(1) EPC.

III. Procedure for entering transfers, licences (including compulsory licences) and other rights and any legal means of execution (Rule 16(1)(j) in conjunction with Rule 20(2)(b))

Regulation (EU) No 1257/2012 does not contain any provisions as regards the 5.

procedure for registering transfers, licences (including compulsory licences) and other rights (such as rights in rem, pledges, security interests etc.) and any legal means of execution, in particular as to the required request, documentary evidence and administrative fee.

It is therefore proposed that Rules 22 to 24 EPC apply mutatis mutandis to entries 6.made in the Register for unitary patent protection (see Rule 20(2)(b)). This ensures full alignment with the current EPO practice. Accordingly, Rule 16(1)(j) sets out that rights and transfer of such rights relating to the European patent with unitary effect shall be registered where the present Rules (which include Rules 22 to 24 EPC applying mutatis mutandis pursuant to Rule 20(2)(b)) provide that they shall be recorded at the request of an interested party.

A European patent with unitary effect may only be transferred in respect of all the 7.participating member states (Article 3(2) Regulation (EU) No 1257/2012). The transfer of a European patent with unitary effect is recorded in the Register for unitary patent protection at the request of an interested party and on production of documents satisfying the EPO that such transfer has taken place. The request is deemed not to have been filed until such time as the prescribed administrative fee has been paid (Rules 22(1) and (2) EPC).

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(w) date of issuance and date of expiry of a supplementary protection certificate for a

product protected by the European patent with unitary effect as well as the participating Member State issuing it.

(2) The President of the European Patent Office may decide that entries additional to

those referred to in paragraph 1 shall be made in the Register for unitary patent protection.

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Any kind of written evidence suitable to prove the transfer is admissible. This 8.includes formal documentary proof such as the instrument of transfer itself (original or a copy thereof) or other official documents or extracts thereof, provided that they directly verify the transfer. In case of doubt, the EPO may ask for a certified copy of the document. Where the original document is not in one of the three official languages of the EPO, the EPO may require a certified translation into one of the official languages. A declaration signed by both parties to the contract verifying the transfer is also sufficient.

The above principles on standards of proof also apply to the registration of 9.licences and rights in rem. The registration of legal means of execution, however, requires the filing of the instrument (original or copy) itself.

If the evidence presented is found to be unsatisfactory, the EPO informs the party 10.requesting the transfer accordingly and invites it to remedy the stated deficiencies. If the request complies with the requirements of Rule 22(1) EPC, the transfer is registered with the date on which the request, the required evidence or the fee has been received by the EPO, whichever is the latest. The competent department for decisions regarding entries in the Register for unitary patent protection is the Unitary Patent Protection Division.

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A European patent with unitary effect may be licensed in respect of the whole or 11.part of the territories of the participating member states (Article 3(2) Regulation (EU) No 1257/2012). It may, in respect of all the participating member states, give rise to rights in rem and may be the subject of legal means of execution (see Article 7 Regulation (EU) No 1257/2012). Moreover, compulsory licences for European patents with unitary effect are governed by the laws of the participating member states as regards their respective territories (see Recital 10 Regulation (EU) No 1257/2012). Rule 22(1) and (2) EPC do also apply to the registration of the grant, establishment or transfer of such rights and any legal means of execution affecting a European patent with unitary effect (see Rule 23(1) EPC).

A licence will be recorded in the Register for unitary patent protection as an 12.exclusive licence if the applicant and the licensee so require. A licence will be recorded as a sub-licence where it is granted by a licensee whose licence is recorded in the Register for unitary patent protection (see Rules 24 (a) and (b) EPC). See explanatory remarks 8 and 9 as to the standard of proof.

Upon request and subject to the payment of the prescribed administrative fee, 13.registered licences and other rights are cancelled on production of documents satisfying the EPO that the right has lapsed, or of a declaration of the proprietor of the right that he consents to the cancellation (Rule 23(2) EPC).

IV. Registration of licensing commitments: only on express request of the proprietor of the European patent with unitary effect (Rule 16 (1)(k))

Pursuant to Article 9(1)(c), Regulation (EU) No 1257/2012, the participating 14.

member states shall give the EPO the task to receive and register licensing commitments undertaken by the proprietor of the European patent with unitary effect in international standardisation bodies.

Publishing the licencing commitments in the Register for unitary patent protection 15.can give parties interested in implementing a certain standard an overview of the patent number, patent claims, the proprietor to address for licencing and the type of licence commitment. This can facilitate the bilateral licensing negotiations necessary for the successful widespread adoption of a standard and to provide assurances to implementers of the standard that the patented technologies will be available to parties seeking to license them.

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Therefore, there may be an interest for the holder of a standard essential patent to 16.have the licensing commitment made public not only within the standard association but also to the outside world via the publication in the Register for unitary patent protection. The entry in the register of a licensing commitment is voluntary, not subject to the payment of an administrative fee and takes place only upon express request by the patent proprietor (see Rule 16(1)(k)). Additional information will be published by the EPO as to which precise information is to be filed by the patent proprietor for the purpose of registering a licensing commitment undertaken in European and international standardisation bodies.

Once a licence has been granted by the proprietor of the European patent with 17.unitary effect as a result of the licencing commitment, this licence can be registered in the Register for unitary patent protection as described above under Rules 22 to 24 EPC which apply mutatis mutandis.

V. Surrender of the European patent with unitary effect (Rule 16(1)(n)

It is proposed to enable the registration in the Register for unitary patent protection 18.of a declaration filed by the proprietor of a European patent with unitary effect that he surrenders his European patent with unitary effect. More particularly, the date of receipt of the declaration of surrender will be registered. In accordance with Article 3(2) Regulation (EU) No 1257, the European patent with unitary effect can only be surrendered with respect to all the participating member states.

The validity of the surrender cannot and will not be verified by the EPO. As 19.surrender is to be subsumed under Article 7 Regulation (EU) No 1257/2012 which governs the European patent with unitary effect as an object of property, national law applies both to the conditions, effects and date of effect of a surrender, including the question of whether a partial surrender is possible. Accordingly, the EPO will merely act as a recipient of the declaration of surrender, be it a complete or partial surrender.

In case of a partial surrender, no new specification will be published by the EPO. 20.Instead, the new set of claims as filed by the patent proprietor would be made available to the public via online file inspection.

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VI. Delegation clause for additional Register entries

For the sake of efficiency, a paragraph 2 is proposed which lays down a provision 21.equivalent to Rule 143(2) EPC allowing the President of the EPO to decide that entries additional to those referred to in paragraph 1 be made in the Register for unitary patent protection. This implies that the entries referred to in paragraph 1 may not be amended nor deleted by the President of the EPO.

In the interest of good patent information policy, there is a need to constantly 22.improve and upgrade the European Patent Register including its future special part, i.e. the Register for unitary patent protection, so as to adapt the Register to the evolving needs of its users. It would moreover be burdensome and inefficient to ask the Select Committee for each and every minor additional Register entry to amend the Rules relating to unitary patent protection.

This is also the ratio of Rule 143(2) EPC which gives the President the possibility 23.to add entries to the European Patent Register. The President decided for instance to add via a decision some procedural occurrences such as the date of despatch of a supplementary European search report, new documents coming to light after the European search report was drawn up, or the date of a request for limitation or revocation of the European patent.

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PUBLICATIONS CHAPTER II

Rule 17 European Patent Bulletin and Official Journal of the European Patent Office

(1) The European Patent Bulletin referred to in Article 129(a) EPC shall contain, as a special part, the particulars the publication of which is prescribed by the present Rules, the Chairperson of the Select Committee or the President of the European Patent Office.

(2) The Official Journal referred to in Article 129(b) EPC shall contain, as a special

part, notices and information of a general character issued by the Select Committee or by the President of the European Patent Office, as well as any other information relevant to the implementation of unitary patent protection.

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Rule 17 – European Patent Bulletin and Official Journal of the EPO

Article 129(a) EPC provides that the EPO will periodically publish a European 1.Patent Bulletin containing the particulars the publication of which is prescribed by the EPC, the Implementing Regulations to the EPC, the Chairperson of the Select Committee or the President of the EPO.

Obviously, no reference is presently made in Article 129(a) EPC to the present 2.rules. Thus, a special provision appears necessary which would expressly make that reference and thereby ensure publication of all particulars set out in the present rules in the European Patent Bulletin (which contains bibliographic data as well as data laid down in Rule 143 EPC). As is the case for the Register for unitary patent protection and for file inspection, it would make sense to have a dedicated chapter for unitary patent entries in the European Patent Bulletin.

Since the Select Committee and the President of the EPO will take decisions 3.pertaining to unitary patent protection the relevant texts will be published in a dedicated chapter of the EPO's Official Journal.

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Rule 18 Publication of translations

The President of the European Patent Office shall determine the form of the publication of the translations referred to in Rule 6, paragraph 2(d), and the data to be included.

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Rule 18 – Publication of translations

Over a transitional period of a maximum of 12 years starting from the date of 1.application of Regulation (EU) No 1260/2012, a request for unitary effect will have to be submitted together with translations of the specification in accordance with Article 6 of said regulation.

Under Article 6(2) Regulation (EU) No 1260/2012, in accordance with Article 9 2.Regulation (EU) No 1257/2012, the participating member states will, within the meaning of Article 143 EPC, give the EPO the task of publishing the translations referred to in paragraph 1 as soon as possible after the date on which a request for unitary effect is filed. The text of such translations will have no legal value and be for information purposes only.

It is proposed that the translations should be published in electronic form. The 3.President of the EPO will be empowered to select an appropriate form for such electronic publication. This may consist of including the translations in the public part of the file relating to the European patent with unitary effect, where they can be inspected online by the public.

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Rule 19 Inclusion of decisions of the Unified Patent Court in the files

The EPO shall include a copy of any decision of the Unified Patent Court forwarded to it by the Court and relating to European patents with unitary effect, including those decisions referred to in Rule 1, in the files relating to the European patent with unitary effect, where it shall be open to inspection.

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Rule 19 – Inclusion of decisions of the Unified Patent Court in the files

In order to inform the public, decisions taken by the Unified Patent Court should be 1.included in the files relating to the European patent with unitary effect, where they will be open to file inspection.

Rule 19 is worded as a blanket clause and allows inclusion in the files of any 2.decision relating to the European patent with unitary effect, including those decisions referred to in Rule 1 (i.e. decisions handed down by the Court in actions brought under in Article 32, paragraph 1(i), Agreement on a Unified Patent Court). Based on this framework, any decision of the Court can be included in the files of the EPO in accordance with the Agreement on a Unified Patent Court and the Rules of procedure of the Unified Patent Court.

For instance, Article 65(5) Agreement on a Unified Patent Court sets out that, 3.where the Court, in a final decision, has revoked a patent, either entirely or partly, it will send a copy of the decision to the EPO. The EPO will include said copy in the files relating to the European patent with unitary effect and will in particular not publish a new specification where the European patent with unitary effect is revoked partly.

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PART IV COMMON PROVISIONS

Rule 20 Common provisions governing procedure

(1) The following provisions of the EPC, as amended, shall apply mutatis mutandis: Article 14, paragraphs 1, 3 and 7; Article 113, paragraph 1; Articles 114, 117, 119, 120, 125; Article 128, paragraph 4; Articles 131, 133; Article 134, paragraphs 1, 5 and 8 .

(2) The following provisions of the Implementing Regulations to the EPC, as amended, shall apply mutatis mutandis:

(a) Rules 1 and 2; unless otherwise provided Rule 3, paragraph 1, first sentence; Rule

3, paragraph 3; Rules 4 and 5; (b) Rules 22 to 24; (c) Rule 50, paragraphs 2 and 3; (d) Rule 111, paragraph 1; Rule 112 and 113; (e) Rules 115; Rule 116, paragraph1; Rule 117 to 124; (f) Rules 125 to 130; (g) Rule 131; Rule 133, paragraph 1, subject to the proviso that the document referred

to in that provision has been received no later than one month after expiry of the period; Rule 134;

(h) Rule 139, first sentence and Rule 140; (i) Rule 142; (j) Rules 144 to 147; (k) Rules 148 to 150 ; (l) Rules 151 to 153. (3) When applying the provisions referred to in paragraphs 1 and 2 mutatis mutandis,

the term “Contracting States” shall be understood as meaning the Contracting States to the EPC, except for Article 125 EPC where it shall be understood as meaning the participating Member States.

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Rule 20 – Common provisions governing procedure I. General

Regulation (EU) No 1257/2012 sets out that the participating member states will, 1.within the meaning of Article 143 EPC, give the EPO some additional tasks, to be carried out in accordance with the "internal rules" of the EPO. For the sake of clarity and definiteness, i.e. legal certainty, and since not all procedural rules of the EPC are of relevance in the present context, it is proposed that a list of the procedural rules of the EPC (both from the Convention and the Implementing Regulations) that apply for the purpose of the present rules be provided. As a result, with respect to the purely procedural aspects of the tasks entrusted to the EPO under Rule 1, only the EPC-provisions enumerated in Rule 20 and those referred to in some other of the present Rules (see for example Rule 13(6) referring to Rule 51(4) and (5) EPC) will apply.

The legislative technique chosen, i.e. a dynamic reference to the relevant EPC-2.provisions allows automatic and full alignment to the current EPO procedures and related practice. It thereby provides legal certainty and clarity for the users acquainted with the classical EPO procedures. In terms of legislation, the dynamic reference ensures that whenever EPC procedural rules are being amended by the Administrative Council so as to improve the EPO procedures, these changes will automatically be applicable for the purpose of the present Rules without necessitating an adoption by the Select Committee.

Only in exceptional cases have some EPC-provisions been reworded and adapted 3.to the needs of the procedures relating to unitary patent protection. This is in particular the case for all the time limits which have been kept short in line with the aim of the Regulation which is to keep the overall duration of the procedure for requesting unitary effect reasonably short for the sake of legal certainty.

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(4) Where the present Rules, including the provisions of the EPC applicable mutatis mutandis under the present Rules, refer to "a period to be specified", this period shall be specified by the European Patent Office. Unless otherwise provided, a period specified by the European Patent Office shall be neither less than one month nor more than four months.

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The applicability of some EPC-provisions will sometimes imply a delegation of 4.powers to the President of the EPO for implementing this rule. For example, with respect to the implementation of Rule 144(d) EPC which deals with “Parts of the file to be excluded from file inspection”, the President of the EPO took a decision excluding documents from inspection if their inspection would for example be prejudicial to personal or economic interests. This decision would for instance also apply since it was taken under the relevant EPC rule applying mutatis mutandis. Again, the objective is to have a full alignment to the EPO procedure in order to avoid parallel procedures and higher costs arising therefrom and to obtain legal certainty and simplicity for the users acquainted with the EPO procedures.

It is to be noted that, pursuant to Rule 20(3), when applying the provisions referred 5.to in paragraphs 1 and 2 mutatis mutandis, the term “Contracting States” shall be understood as meaning the Contracting States to the EPC, except for Article 125 EPC where it shall be understood as meaning the participating Member States. Accordingly, the term “contracting states” referred to in Articles 119, 131, 133 and Article 134, paragraphs 1, 5 and 8 EPC, Rules 148 to 150 EPC, means the contracting states to the EPC.

II. Language Regime

Article 14(1) EPC determines the official languages of the EPO, and Article 14(3) 6.EPC defines the term "language of proceedings". Both provisions are applicable as laid down in Rule 20(1). However, the request for unitary effect has to be filed in the language of proceedings (see Article 9(1)(g) Regulation (EU) No 1257/2012 and Rule 6 (2)). This deviates from the EPC regime, where any of the three EPO official languages may be used as a matter of principle in written proceedings (see Rule 3(1) EPC). It is therefore proposed that unless otherwise provided, Rule 3(1), first sentence, EPC (as well as Rule 3(3) EPC) should apply mutatis mutandis.

As a consequence, as regards the language in written proceedings before the 7.EPO, any party may use any official language of the EPO except for the request for unitary effect itself, which has to be filed in the language of proceedings. In practice, users will complete a dedicated form when requesting unitary effect which will inter alia contain the request in the three official languages of the EPO.

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In order to avoid delays in the straightforward procedure for requesting unitary 8.effect, the EPC provisions allowing documents to be filed within a time limit in an admissible non-EPO language provided that a translation is filed within a month are not applicable (Article 14(4) EPC; Rule 3(1), second sentence, EPC; and Rule 6(2) EPC). As a result, it will for instance not be possible to file a request for re-establishment of rights in an admissible non-EPO language and to file a translation within a month. This is in contrast to the proceedings governed by the EPC). In practice, however, this possibility is almost never used when it comes to requests for re-establishment of rights or replying to an invitation from the EPO to rectify a deficiency within a certain period.

III. File inspection and constitution, maintenance and preservation of files

Documents relating to the procedure for the registration of unitary effect as well as 9.any document relating to the European patent with unitary effect will have to be open to public file inspection. It is therefore proposed that a special part be created in the existing electronic file relating to the European patent application and the resulting European patent.

For that purpose, it is proposed that Article 128(4) EPC should apply mutatis 10.mutandis to European patents with unitary effect. As a result, the files relating to a European patent with unitary effect could be inspected on request, subject to the modalities and restrictions laid down in Rules 144 to 146 EPC, which also apply mutatis mutandis.

As regards the constitution, maintenance and preservation of files, it is proposed 11.that Rule 147 EPC should apply mutatis mutandis.

IV. Representation

It is proposed that Articles 133 and 134 paragraphs 1, 5 and 8 EPC, as well as 12.Rules 151 to 153 EPC apply mutatis mutandis. In other words, almost the entire, unaltered EPO regime applies, except for some provisions on the list of professional representatives which are not relevant in the present context. As explained under point 5 above, the term “Contracting State” used in Articles 133 and 134 EPC is to be understood as meaning the EPC Contracting States and not the 25 member states participating to enhanced cooperation (see Rule 20(3))

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This means that for example a Spanish firm having its place of business in Spain 13.is not subject to compulsory representation by a professional representative for the purpose of filing a request for unitary effect and all the other procedures regarding a European patent with unitary effect. Where a legal person does however not have its place of business in an EPC Contracting State, it will need to be represented by a professional representative and act through him in all proceedings regarding the European patent with unitary effect, including for the act of filing of the request for unitary effect.

V. Oral proceedings and taking of evidence, notifications, time limits

Part VII, Chapters III (oral proceedings and taking of evidence) and IV 14.(notifications) of the Implementing Regulations to the EPC apply mutatis mutandis. The fundamental right to oral proceedings is provided for in Rule 21, see the explanations there.

As regards the calculation of periods, Rule 131 EPC applies mutatis mutandis. For 15.the purpose of legal certainty, and in order to keep the overall duration of the procedure for requesting unitary effect reasonably short, in line with Regulation (EU) No 1257/2012, some modifications to the periods of the EPC are proposed: Rule 20(4) takes over the substance of Rule 132 EPC but shortens the minimum period to one month instead of two. The reason for this shortening is that the procedure for requesting unitary effect significantly differs from the patent grant procedure insofar as it exclusively relates to the fulfilment of purely formal requirements. It does in particular not require the preparation of substantive replies from the requester which would justify longer periods.

Furthermore, the content of Rule 133(1) EPC is set out separately in Rule 20(1)(g) 16.with the proviso that the document referred to therein must have been received no later than one month after expiry of the relevant period. This is to be in line with the one-month period for filing the request for unitary effect, given the fact that the main documents to be filed with the EPO will in fact be the request for unitary effect and the translations.

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Rule 21 Oral proceedings

(1) Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings. However, the European Patent Office may reject a request for further oral proceedings where the parties and the subject of the proceedings are the same.

(2) Nevertheless, oral proceedings shall take place before the Unitary Patent

Protection Division at the request of the proprietor of the European patent in the procedure concerning the request for unitary effect only where the Unitary Patent Protection Division considers this to be expedient.

(3) Oral proceedings before the Unitary Patent Protection Division shall not be public.

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Rule 21 – Oral proceedings

In accordance with Article 116(1) EPC which enshrines the fundamental right to 1.oral proceedings, paragraph 1 provides that oral proceedings take place either at the instance of the Unitary Patent Protection Division if it considers this to be expedient or at the request of any party to the proceedings. However, the Unitary Patent Protection Division may reject a request for further oral proceedings before it where the parties and the subject of the proceedings are the same.

However, in the interest of procedural economy, it is proposed that the principle 2.under which oral proceedings are to be held upon request of any party to the proceedings should be expressly restricted in proceedings concerning the request for unitary effect. Thus, oral proceedings in proceedings concerning the request for unitary effect will normally be excluded and should take place only if the Unified Patent Protection Division considers this to be expedient. Only in exceptional cases where face-to-face dialogue is likely to result in a speedier resolution of the issues relevant to the registration of unitary effect will the EPO deem oral proceedings to be expedient.

The procedure for registering unitary effect should be kept as expeditious as 3.possible for reasons of legal certainty. Holding oral proceedings at the request of the proprietor where the EPO intends to refuse the request for unitary effect would as a rule considerably delay the whole proceedings because the EPO would need to duly prepare oral proceedings (proprietor to be summoned with at least two months’ notice of the summons according to Rule 115(1) EPC which applies mutatis mutandis (see Rule 20(2)(e)). This would also be very cost-intensive (communication accompanying the summons to be issued, translations to be provided, minutes to be taken). Oral proceedings would moreover not produce any further clarity, because the possible formal defects can usually not be removed and the legal situation will be clear cut and simple in the majority of cases (see Rules 5 and 6).

Oral proceedings with respect to other procedures, such as the procedure for 4.re-establishment of rights with regard to the time limit for paying renewal fees or with regard to the time limit for filing the request for unitary effect, are unaffected by this restriction and are to be held on request in accordance with proposed paragraph 1.

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Rule 22 Re-establishment of rights

(1) A proprietor of a European patent or of a European patent with unitary effect who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing the European patent with unitary effect to lapse according to Rule 14, paragraph 1(b), or the loss of any other right or means of redress.

(2) Any request for re-establishment of rights under paragraph 1 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. However, a request for re-establishment of rights in respect of the period specified in Rule 6, paragraph 1, shall be filed within two months of expiry of that period. The request for re-establishment of rights shall not be deemed to have been filed until the prescribed fee has been paid.

(3) The request shall state the grounds on which it is based and shall set out the facts

on which it relies. The omitted act shall be completed within the relevant period for filing the request according to paragraph 2.

(4) The European Patent Office shall grant the request, provided that the conditions

laid down in the present Rule are met. Otherwise, it shall reject the request. (5) If the request is granted, the legal consequences of the failure to observe the time

limit shall be deemed not to have ensued. (6) Re-establishment of rights shall be ruled out in respect of the time limit for

requesting re-establishment of rights and in respect of the period referred to in Rule 7, paragraph 3.

(7) Any person who, in one or several participating Member States, has in good faith

used or made effective and serious preparations for using an invention which is the subject of a European patent with unitary effect in the period between the loss of rights referred to in paragraph 1 and publication in the Register for unitary patent protection of the mention of re-establishment of those rights, may without payment continue such use in the course of his business or for the needs thereof.

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Rule 22 – Re-establishment of rights

It is proposed that re-establishment of rights as the only applicable means of legal 1.redress for all the procedures relating to the European patent with unitary effect, including the procedure for requesting unitary effect, should be introduced. Due to editorial constraints, a cross reference to the numerous different EPC provisions governing re-establishment of rights and its interaction with further processing would be unclear and too difficult to read. Therefore, a new all-inclusive provision has been formulated.

A typical case giving rise to re-establishment of rights will be the failure to pay 2.renewal fees in time for the European patent with unitary effect. In addition, should the proprietor of the European patent omit to file a request for unitary effect or file said request too late, it is proposed that he should be able to obtain re-establishment of rights in respect of the non-extendable one-month period specified in Rule 6(1). It is furthermore proposed that in such a case, the request for re-establishment should be filed within two months of expiry of that period. The omitted act, i.e. the filing of the request for unitary effect, must also be completed within this two-month period.

The special period of two months instead of the usual one-year-period is due to 3.the fact that the procedure for requesting unitary effect should be, in line with Regulation (EU) No 1257/2012, an expeditious procedure with a short overall duration for reasons of legal certainty. The prevailing interest is therefore an early clarification of the legal situation in the state of uncertainty following grant where the patentee can either opt for a European patent with unitary effect or a different legal regime via national validations (see also the special period provided for the re-establishment of rights in the priority period under Article 87(1) EPC in conjunction with Rule 136 EPC)).

For the same reason, - i.e. keeping the procedure short - it is proposed to exclude 4.from re-establishment of rights the period referred to in Rule 7(3) (i.e. the one month period for rectifying formal deficiencies in the request for unitary effect).

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Rule 23 Form of decisions

Decisions of the European Patent Office against which actions can be brought before the Unified Patent Court in accordance with Article 32, paragraph 1(i), Agreement on a Unified Patent Court shall be reasoned and shall be accompanied by a communication pointing out the possibility of bringing an action before the Unified Patent Court. The parties may not invoke the omission of the communication.

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Rule 23 – Form of decisions

Proposed Rule 23 reproduces Rule 111(2) EPC with some adaptations required in 1.view of the fact that actions against EPO decisions are to be brought before the Unified Patent Court.

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Rule 24 Interlocutory revision

(1) If the European Patent Office is informed by the Unified Patent Court that an application to annul or alter a decision of the European Patent Office is admissible and if the European Patent Office considers that the application is well founded, it shall within two months of the date of receipt of the application

(a) rectify the contested decision in accordance with the order or remedy sought by

the claimant and

(b) inform the Unified Patent Court that the decision has been rectified.

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Rule 24 – Interlocutory revision

Proposed Rule 24 is largely modelled on Article 109 EPC and goes hand in hand 1.with Rule 91 of the draft Rules of procedure of the Unified Patent Court (16th draft of 31 January 2014, hereinafter referred to as draft RoP UPC)).

Actions concerning decisions of the EPO in carrying out the tasks referred to in 2.Article 9 Regulation (EU) No 1257/2012 are to be brought before the Unified Patent Court (see Article 32(1)(i) UPC Agreement) within two months of service of the decision of the EPO (see Rule 88 draft RoP UPC which governs “Applications to annul or alter a decision of the Office").

The UPC then makes an admissibility check (and the applicant can correct 3.deficiencies where applicable). If the application is admissible, the UPC will forward it to the EPO under Rule 90 draft RoP UPC. Under Rule 91 draft RoP UPC, the EPO has one month from the date of receipt of the application to rectify the contested decision and to inform the Court that the decision has been rectified.

Proposed Rule 24 mirrors this procedure. However, it is noted that the period of 4.one month for both the rectification and information of the Court provided in UPC RoP is quite short. If interlocutory revision is to be an efficient and workable system, the EPO needs more time, i.e. a minimum of two months (under the current EPO practice, the period is three months, see Art. 109 EPC).

Since actions concerning decisions of the EPO in carrying out the tasks referred to 5.in Article 9 Regulation (EU) No 1257/2012 are to be brought before the Unified Patent Court and not before the EPO, which could have allowed a post-decision revision mechanism without a possible involvement of the UPC, it is proposed to establish, in the framework of the implementation, an EPO internal procedure (e.g. internal Guidelines) which will ensure that in cases where an adverse decision is likely to be issued (e.g. rejection of a request) or where the case involves complex legal questions, a legally qualified member of the Unitary patent protection Division (see Rule 4(3)) is involved before the issuance of the decision. This would guarantee that EPO decisions against which an action can be brought before the UPC are legally sound.

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PART V FINANCIAL ISSUES

Rule 25 Cover for expenditure incurred by the European Patent Office1

(1) The costs incurred by the European Patent Office in carrying out the tasks entrusted to it in accordance with Article 9, paragraph 1, Regulation (EU) No 1257/2012 have to be borne by the participating Member States pursuant to Article 146 EPC and have to be covered by the renewal fees generated by the European patent with unitary effect pursuant to Article 10 Regulation (EU) No 1257/2012.

(2) In case the application of paragraph 1 does not lead to a balance of income and

expenditure, the relevant provisions of the EPC shall apply. (3) The implementation of paragraphs 1 and 2 shall ensure cost neutral performance

of the tasks entrusted to the EPO. It shall be governed by the EPO’s Financial Regulations.

1 To be discussed in the context of the financial issues.

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Rule 25 – Cover for expenditure incurred by the European Patent Office

According to Article 146 EPC and Article 10 ff Regulation (EU) No 1257/2012 the 1.European patent with unitary effect has to be self-financing and has to be implemented in a way that ensures budget neutrality.

Paragraph 2 is intended to deal in particular with the situation which might occur in 2.the initial phase.

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ANNEX 1 SC/10/14 SHOWING ALL CHANGES

SC/10/14 e 2/84 141320004

RULES

relating to Regulation (EU) No 1257/2012 of the European Parliament and of the

Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection and to Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of

unitary patent protection with regard to the applicable translation arrangements

(hereinafter "Rules relating to Unitary Patent Protection")

SC/10/14 141320004

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ure the gotrusted to taph 1.

E ADMINIS

ve Council

udgetary na

dget and aementation

vernance athe Europe

STRATIVE

shall be co

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ny amendin of Regula

and supervean Patent

E COUNCIL

ompetent t

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vision of thOffice in

5/84

L

to adopt

)

he

4

SC/10/14141320004

Rule 2 – C

At1.agEac

A2.Cco

P3.stobthwrereshreCE

M4.EshFeofof

e

Competen

t their inaugreed to esuropean Pccordance

rticle 145(2ommittee oontracting

ursuant to tates will ebligations uheir capacitwill ensure teferred to inenewal feehare of distegulation. Touncil of thPC.

Mirroring thePC (see Ahould be coees, other f proceduref Article 9(5

nces and d

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Patent Orgawith Articl

2) EPC proof the Admstates refe

Article 9(2nsure comundertakenty as contrthe governn Article 9(s in accordtribution ofTo that endhe Europea

e competeArticles 33(

ompetent trules or dee. The wor5) of the R

duties of t

eting of 20the Select

anisation we 9(2) Reg

ovides thatministrativeerred to in A

2) Regulatimpliance win in the EPracting statance and s(1) of the rdance withf the renewd they will an Patent

ences of the1)(2) and 4to adopt anecisions ofrding used

Rules of pro

the Select

March 201t Committewithin the mgulation (E

t the powe Council wArticle 142

on (EU) Nith said regPC and willtes to the Esupervisioregulation ah Article 12wal fees in set up a SOrganisati

e Administ46 EPC), itnd amend f a financiain propose

ocedure of

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13, the paree of the Ameaning ofU) No 125

rs and funcwill be dete2(1) EPC.

o 1257/20gulation in l co-operatEPC, the pn of the acand will en of the regaccordancelect Comion within t

trative Cout is proposethe presen

al or budgeed paragrathe Select

ee

rticipating mAdministratif Article 1457/2012.

ctions of thrmined by

12, the parfulfilling thte to that e

participatingctivities relansure the sgulation andce with Artmittee of ththe meanin

uncil as proed that thent rules, thetary natureaph 1 corret Committe

member stive Counci

45(1) EPC

he Select the group

rticipating eir interna

end. Moreog member ated to the

setting of thd the settinicle 13 of the Adminisng of Articl

ovided for ie Select Coe Rules ree and its oesponds toee.

6/84

tates l of the and in

of

member tional

over, in states

e tasks he level of ng of the the strative e 145

in the ommittee elating to wn rules

o the one

4

SC/10/14 e 7/84 141320004

SC/10/14141320004

[P5.AdbuN

Pa5.suacE

Th6.prP

e

Paragraphdministratiudget relato 1260/20

aragraph 2upervision ccordance PC.

he memberocedures rocedure o

2 providesve Counciting to the 12.]

2 stipulatesof the actiwith Articl

ership, chaand functio

of the Sele

s that the Sl adopts thimplement

s that the Svities relate 9(2) Reg

irmanship,oning of thct Commit

Select Comhe budget atation of Re

Select Comted to the tgulation (E

, voting righe Select Cttee.

mmittee as and any amegulations

mmittee wilasks entruU) No 125

hts and allCommittee

a sub-bodmending or (EU) No 1

ll ensure thusted to the57/2012 an

other issuare laid do

dy of the r suppleme1257/2012

he governae EPO, in nd Article 1

ues relatedown in the

8/84

entary and

ance and

45(1)

d to the Rules of

4

SC/10/14 141320004

CHAPTER

Rule 3

The UnitaPresident Select Co3, EPC sh

e

FR IIIS

FO

ary Patent Pof the Eur

ommittee ohall apply m

FUNCTIONSPECIAL D

Functions Office

Protection ropean Patf the Admimutatis mu

NS AND PODEPARTM

and powe

Division retent Officenistrative C

utandis

OWERS OMENTS OF

ers of the

eferred to i, who shalCouncil. To

OF THE PRTHE EPO

President

in Rule 4 sl be respono this end,

RESIDENTO

t of the Eu

shall be mansible for iArticle 10

T OF THE E

uropean Pa

anaged by ts activities, paragrap

9/84

EPO AND

atent

the s to the hs 2 and

4

SC/10/14141320004

Rule 3 – F

P1.pri.efaenthou

Th2.acUC

In3.futhpr

Ac4.enadACcoThst8(mE

e

Functions

roposed Rrovided fore. direct thact the Unitntrusted tohis divisionut the task

he proposeccording tonitary Pateouncil (see

n accordanunctions anhat Article 1ractice of t

ccordinglynsure the fdoption of rticle 10(2)ommittee aome withinhis is, of cotates to sub(2) of the R

managemenPO to the

s and pow

Rule 3 reiter in the EPe special dtary Patent

o the EPO . This Diviss entrusted

ed Rule also which theent Protecte also Artic

ce with Artnd powers 10(2) and (he Europe

, the Presifunctioninginternal ad)(a) EPC). any propos

n the compourse, withbmit any pRules of Prnt report wSelect Com

ers of the

rates and C and in thdepartment Protectiounder Rulesion, pursud to the EP

so reflects e Presidention Divisiocle 10(1) E

ticle 143(2set out in A(3) EPC sh

ean Patent

dent of theg of the UndministrativHe will alssal for ameetence of t

hout prejudproposal to rocedure o

will have to mmittee (S

e Presiden

clarifies thhe present t establishn Division e 1(1) will buant to RulPO under R

the principt of the EP

on to the SEPC).

2) EPC, andArticle 10(2hall apply mOrganisat

e EPO will itary Paten

ve instructiso have theending the the Select dice to the

the Selectof the Selec

be submittSee Article

t of the Eu

e PresidenRules: it sed under Aestablishebe carried le 4(2), wilRule 1(1).

ple set out PO is respoelect Com

d instead o2) and (3) mutatis mution.

in particulant Protectioons and ine possibilitpresent RCommitteepossibility t Committect Committted each y10(2)(e) E

uropean P

nt's managsets out theArticle 143ed under Rout under l be respon

in Article 1onsible for mittee of th

of enumeraEPC, it is

utandis, foll

ar take all on Divisionnformation ty to submi

Rules or fore (see Artiof the part

ee in accortee. Furtheyear by theEPC).

Patent Offi

gement fune power to

3 EPC whicRule 4(1). T

the responnsible for c

145(1) EPCthe activitihe Adminis

ating all theproposed tlowing the

necessaryn, includingto the pub

it to the Ser decisionscle 10(2)(cticipating mrdance withermore, a President

10/84

ice

nctions as manage,

ch is in The tasks nsibility of carrying

C ies of the strative

e to state constant

y steps to g the blic (see elect s which c) EPC). member h Article

t of the

4

SC/10/14 e 11/84 141320004

Rule 4 Unitary Patent Protection Division

(1) A Unitary Patent Protection Division is hereby established within the European Patent Office as a special department within the meaning of Article 143, paragraph 2 EPC.

(2) The tasks entrusted to the European Patent Office in accordance with Rule 1,

paragraph 1, shall be carried out under the responsibility of the Unitary Patent Protection Division.

(3) Decisions of the Unitary Patent Protection Division shall be taken by one legally

qualified member. (4) The President of the EPO may entrust to employees who are not legally qualified

members the execution of duties falling to the Unitary Patent Protection Division, and involving no legal difficulties.

SC/10/14141320004

Rule 4 – U

U1.ththgrthofESsp

It 2.PadNmfoThdeSeApahaU

G3.PaquAgacle

e

Unitary Pa

nder Articlhe authorishe EPO. Acroup of Cohese additiof the EPO PC shall aelect Compecial depa

is proposerotection Ddditional tao 1257/20

member staor these adherefore, tepartmentsearch, Exappeal will narticular, aave to be bPC Agreem

Given the pratent Proteualified megreement wctions unde

egally quali

atent Prot

e 143(1) Esation provccording to

ontracting Sonal tasksshall direc

apply mutatmittee of thartments s

ed to set upDivision". Sasks referre12 and ent

ates. The ddditional tashere is a ns entrustedamining, Onot have a

actions agabrought bement) and

redominanection Divisember (seewhich layser Article 3fied judges

ection Div

EPC, the grided for in o Article 14States may. Moreovert such spetis mutandhe Adminis

set up unde

p such a sSuch a speed to in Arttrusted to tepartmentsks lying o

need to setd with the p

Opposition aany responainst decisiefore the U

not before

ntly legal nasion, it is pe also Artics down that32(1)(i) UPs.

vision

roup of CoArticle 142

43(2) EPC,y be set upr, Article 14

ecial departis. Finally, strative Coer Article 1

pecial depecial departticle 9, parthe EPO uts referred

outside the t up a specproceduresand Legal sibility wheons of the nified Pate

e the EPO

ature of theproposed thcle 20(2) Et any pane

PC Agreem

ontracting S2(1) EPC, , special dep within the43(2) EPCtments andpursuant t

ouncil supe43(2) EPC

partment antment will bragraph 1, nder Rule to in Articlnormal EP

cial departms laid downDivisions aen it comesUnitary Pa

ent Court (sBoards of

e decisionshat its decPC). This

el of the cement shall s

States havmay give aepartmentse EPO in orC lays downd that Articto Article 1

ervises the C.

nd to namebe responsRegulation1(1) by thee 15 EPC

PO grant pment. Thisn in the EPas well as s to the unatent Protesee ArticleAppeal.

s to be takisions be tis in line wntral divisi

sit in a com

ing availedadditional ts common rder to carn that the Pcle 10(2) an145(1) EPC

activities o

e it "Unitarysible for thn (EU) e participaare not res

procedure. s will clarifyPC, namelythe Boards

nitary patenection Divises 32(1)(i) a

ken by the aken by on

with Article on dealing

mposition o

12/84

d itself of tasks to to the

rry out President nd (3) C, the of the

y Patent e

ating sponsible

y that the y the s of nt. In sion will and 47(7)

Unitary ne legally 8(6) UPC

g with f (three)

4

SC/10/14 e 13/84 141320004

SC/10/14141320004

Pa4.winletoEco

N5.PbetareinDke

e

aragraph 4who are notndividual duegal difficulo formalitiePO, e.g. womplex leg

o additionarotection De the existiasks identicesponsiblen its capaciivision. Byept low.

4 foresees t legally quuties fallingties. Accors officers u

where a reqgal questio

al administDivision. It ing staff ofcal or simil. The depaty as Unifie

y using the

that the Palified mem

g to the Unrdingly, ceunder the cquest is nons.

trative infrawill in fact f the Legal ar to those

artment wiled Patent existing in

resident ofmbers (i.e.nitary Patertain aspecconditions t disputed

astructurebe a virtuaDivision u

e for whichl thus weaProtection

nfrastructur

f the EPO . formalitiesnt Protectiocts of the pto be deteor where a

will be reqal division under Articlh the Unifiear two hats Division ore and exp

may entrus officers) on Divisionproceduresermined by a task doe

quired for thin the sensle 20 EPC

ed Patent Dand will ta

or in its cappertise, add

st to emplothe executn, and invos may be dthe Presids not invol

he Unitary se that its swhich dea

Division wilake decisiopacity as Lditional cos

14/84

oyees tion of olving no delegated dent of the ve

Patent staff will als with ll be

ons either egal sts can be

4

SC/10/14 141320004

PART II

CHAPTER

Rule 5

(1) Atrepr

(2) U

w

e

PON

TR I

G

t the requeegistered brotection.

nitary effecwith the sam

PROCEDUOFFICE UNNO 1260/20

THE REQU

General

est of the pby the Euro

ct shall onme set of c

RES TO BNDER REG012

UEST FOR

proprietor oopean Pate

ly be regisclaims in re

BE CARRIGULATION

R UNITARY

of the Euroent Office i

tered if theespect of a

ED OUT BNS (EU) N

Y EFFECT

opean paten the Regi

e Europeanll the partic

BY THE EUO 1257/20

ent, unitary ister for un

n patent hacipating Me

UROPEAN012 AND

effect shanitary paten

as been grember Sta

15/84

N PATENT

all be nt

ranted tes.

4

SC/10/14141320004

Rule 5 – T I. R

Pa1.Npr

Pa2.thoptocoRcowwthra

Th3.efhaNmuninR

W4.alofef(E

e

The reque

Requireme

aragraph 1o 1257/20roprietor of

aragraph 2he light of tptions conto retain optonsidered

Regulation (onsultation

with Recital where the Ehe 25 particatified the U

he territoriaffect is alreave to be do 1257/20

member stander Article

ndicated in Rule 16(1)(g

Where one l the particf claims forffect cannoEU) No 125

est for unit

nts for the

1 reflects th12, unitaryf the Europ

2 sets out the consulttained in thtion 1 as reas the mos(EU) No 12

ns. Accordi7 Regulat

European pcipating meUPC Agree

al scope oeady registdetermined12, i.e. by

ates in whice 18(2), sethe Regist

g)).

of the two cipating mer all these ot be regist57/2012).

tary effect

e registrat

he fact thay patent propean paten

the "substatations andhe former vegards the st appropri257/2012. ngly, It sti

tion (EU) Npatent has ember statement or n

f a Europetered in thed under Artreferring to

ch the Euroecond subpter for unita

joint requiember statMember Stered by th

t – Genera

tion of un

at procedurotection is nt to be file

antive" reqd of the disversion of wording o

iate in part One optioicks to the

No 1257/20been grantes, irrespe

not at a cer

ean patent e Register ticle 18(2),o the date opean pateparagraph,ary patent

rements setes in the g

States), or ehe EPO (se

al

itary effec

rally, underobtained b

ed with the

quirements scussions othis docum

of proposedticular as ron which hawording o

012: unitarynted with thective of wrtain point i

with unitarfor unitary, second suof registra

ent with un, Regulatioprotection

et out in pagranted Eueven both,ee Article 3

ct

r Regulatioby a formaEPO.

for obtainon the threment (SC/1d Rule 5(2)egards conas resultedf Article 3(y effect is rhe same se

whether thein time.

ry effect foy patent proubparagra

ation. The pnitary effecon (EU) Non for inform

aragraph 2ropean pa is/are not

3(1) and Re

on (EU) al request o

ing unitaryee different

6/13), it is ) which is nformity wd from the 1) in conjuregistered et of claims

ese States

or which unotection wiph, Regulaparticipatin

ct has unitao 1257/201mation purp

2 (i.e. desigtent and safulfilled, u

ecital 7 Re

16/84

of the

y effect. In t proposed proposed

ith

unction only s for all have

nitary ll then ation (EU) ng ary effect 2 will be

poses (see

gnation of ame set nitary

egulation

4

SC/10/14 e 17/84 141320004

SC/10/14141320004

N5.effinuneflarebe

II. Mst

U6.masrehaR

[In7.wdistwnothE

e

o express ffect has bnancial reqnnecessarffect (it wou

ate paymenequest deee kept as s

Multiple protates

nitary effecmultiple pros long as sespect of aave to be f

Rule 20(2)(l

n order to ewith unitary

fferent EPtating that

within the onon-extendahe deficiencPO will rej

authorisateen includ

quirement nily compliculd inevitant, and theemed not tosimple and

oprietors

ct can alsoprietors in

said Europeall the particfiled via the), which pr

ensure thaeffect inste

PC contractall the propne-month pable periodcy under Rect the req

tion to introed: such anot provide

cate and thbly lead toreby neceso have bee attractive

in respect

o be requerespect ofean patentcipating me common rovides tha

at all propriead of a clting states,prietors coperiod of Rd of one mRule 7(3). Iquest for un

oduce a spa fee woulded for by R

herefore de instancesssitate remen filed, etcas possibl

t of the sa

sted wheref the same t has beenember statrepresent

at Rule 151

ietors in falassic Euro, a declara

onsent to thRule 6(1), tonth followf the deficinitary effec

pecific fee fd constituteRegulation elay the pros of non-pamedies, surc.) when, inle.

ame or diff

e a Europeor differen

n granted wtes. Procedative refer1 EPC app

ct agree toopean pateation is to bhe making the declarawing the inviency is noct.]

for the reque a supplem(EU) No 1ocedure foayment, or rcharge, san fact, the

ferent par

ean patent nt participawith the samdurally, thered to in R

plies mutati

o obtain a Eent to be vabe filed undof the requ

ation may svitation of t

ot corrected

uest for unmentary fo257/2012

or requestinpartial pay

anctions suprocedure

rticipating

was grantating membme set of ce request w

Rule 151 EPis mutandi

European alidated in der Rule 6(uest. If notstill be filedthe EPO tod in due tim

18/84

nitary ormal and and could

ng unitary yment, or uch as the e should

member

ted to ber states claims in will then PC (see is).

patent the

(2)(a) t filed d within a o correct me, the

4

SC/10/14 e 19/84 141320004

Rule 6 Requirements of the request for unitary effect

(1) The request for unitary effect shall be filed with the European Patent Office no later than one month after publication of the mention of grant of the European patent in the European Patent Bulletin. [It may not be withdrawn].

(2) The request for unitary effect shall be filed in writing in the language of the

proceedings and shall contain: (a) particulars of the proprietor of the European patent making the request (hereinafter

"the requester") as provided for in Rule 41, paragraph 2(c), EPC [and, in case of multiple proprietors in respect of the same or different participating Member States, a declaration that all the proprietors consent to the making of the request];

(b) the number of the European patent to which unitary effect shall be attributed; (c) where the requester has appointed a representative, particulars as provided for in

Rule 41, paragraph 2(d), EPC;

(d) a translation of the European patent as required under Article 6, paragraph 1, Regulation (EU) No 1260/2012, as follows:

where the language of the proceedings is French or German, a full translation of the specification of the European patent into English; or

where the language of the proceedings is English, a full translation of the specification of the European patent into any other official language of the European Union.

SC/10/14141320004

Rule 6 – R

R1.th

Pa2.(Egrefdisu

In3.(ech

S4.rerehoanAfofosp

Pa5.RththprrerethcatraAth

e

Requirem

Rule 6 sets he "substan

aragraph 1EU) No 125rant is pubffect. [The fficulties wubsequent

n order to aelectronic) heckboxes

hould the pequest for uespect of thowever be nalogy withrticle 87(1)

or unitary eor unitary epecified in

aragraph 2Regulation (he requiremhat the EPOroprietor. [Aespect of themarks undhe patent toase a repreanslation rrticle 6(1)

he transitio

ents of th

out the forntive" requ

1 of the pro57/2012, s

blished in thprohibition

with respecly filing a n

avoid any fforms for f

s alerting th

patent propunitary effehe period sfiled within

h the re-es) EPC (see

effect, musteffect filed t

Rule 6(1),

2 specifies(EU) No 12

ment underO can checAs regardshe same oder Rule 5o which unesentative requiremenRegulationnal period

e request

rmal requirirements s

oposed rultipulates ahe European to withdract to the conew reques

formal deficfiling the rehe patent p

prietor omiect with thespecified inn two mon

stablishmene Rule 22(2t also be ctoo late, i.e see the ex

the langua257/2012, r the EPC fck the requs the declar different .] The num

nitary effecthas been

nt of Articlen (EU) No is termina

for unitar

rements foset out in R

e, in accora time limit an Patent aw the reqnditions ofst.]

ciencies, thequest for uproprietor t

it to file a re EPO, he n Rule 6(1)ths of expint of rights2)) and the

completed ie. after thexplanatory

age to be unamely thefor the writuester's idearation to bparticipatin

mber of the t will be attappointed

e 9(1)(h) R1260/2012ted.

ry effect

r obtainingRule 5(2).

rdance withof one moBulletin foruest providf withdrawa

he EPO intunitary effeto all the re

request formay obtai

). The requiry of the as for the prie omitted ain this peri

e expiry of ty remarks o

used in acce languagetten form. Pentity, i.e. wbe filed in cng membeEuropean

tributed. P. Paragrap

Regulation (2. It will hav

g unitary ef

h Article 9(onth after thr filing the des legal cal and the

tends to prect which welevant form

r unitary effn re-estab

uest for re-aforementioiority perio

act, i.e. the od (Rule 2the one-moon Rule 7 b

cordance we of proceeParagraphwhether hecase of mur states, se

n patent is aragraph 2

ph 2(d) sets(EU) No 12ve to be de

ffect, as op

(1)(g) Reguhe mentionrequest fo

certainty anpossibility

rovide appwill containmal require

fect, i.e. fileblishment o-establishmoned periood under

filing of th22(3)). For onth periodbelow.

with Articleedings, as

h 2(a) is reqe is in fact ltiple propree the exprequired to2(c) is nees out the tr257/2012 aeleted as s

20/84

pposed to

ulation n of the r unitary nd avoids of

propriate n ements.

e no of rights in ment must d, by

e request a request d

e 9(1)(g) well as

quired so the patentrietors in

planatory o identify ded in ransitional and soon as

4

t

SC/10/14 e 21/84 141320004

Rule 7 Examination of the request by the European Patent Office

(1) If the requirements under Rule 5, paragraph 2, are met and the request for unitary effect complies with Rule 6, the European Patent Office shall register the unitary effect in the Register for unitary patent protection and communicate the date of this [the] registration to the requester. [The date registration of unitary effect shall be the date on which all the requirements set out in Rule 6 are complied with].

(2) If the requirements under Rule 5, paragraph 2, are not met or the request for

unitary effect does not comply with Rule 6, paragraph 1, the European Patent Office shall reject the request.

(3) If the requirements under Rule 5, paragraph 2, are met and the request for unitary

effect complies with Rule 6, paragraph 1, but fails to comply with the requirements of Rule 6, paragraph 2, the European Patent Office shall invite the requester to correct the deficiencies noted within a non-extendable period of one month. If the deficiencies are not corrected in due time, the European Patent Office shall reject the request.

SC/10/14141320004

Rule 7 – E

In1.prstshcoknEinthpaArereheby

Pa2.sucacoalenexdereefreprretrainun

e

Examinati

n view of throcedure fotraightforwhould be aourts (inclunow as soouropean p

nterest in a he unitary eatent is derticle 4(2)

equesting uemedy mineard undery the EPC

aragraph 1ubstantive an registerommunicatso providensure that xaminationefinition, thequirementffect is for equired tranroprietor inegistration anslation,

n the Regisnitary effec

ion of the

he overridinor requestiard as poss short as

uding the Uon as possatent. Furtswift regis

effect of a emed not tRegulationunitary effeor formal dr Article 11and with w

1 governs tas provide

r the unitarte the datees for a legthe date o

n procedurehe date of rts set out iexample finslation un

n reply to aof unitary eand not the

ster for unitct.]

request b

ng need foing and regssible. In ppossible b

Unified Patsible wheththermore, tstration of tEuropean to have tak

n (EU) No ect do havedeficiencie3(1) EPC,

which they

the case wed for undery effect in e of this reggal definitioof registratie for registregistrationn Rule 6 aled within

nder Rule 6an invitationeffect will be date on wtary patent

by the EPO

r legal certgistering uarticular, th

bearing in ment Court)

her unitary the participthe unitarypatent hasken effect 1257/2012e a legitimas containe as is the care acqua

where all reer Rules 5(the Registgistration toon of the coon is not dtering unitan of unitaryre compliethe one-m6(2)(d), ann by the EPbe the datewhich the t protection

O

tainty and nitary effeche overall mind that tand other effect will

pating memy effect sincs been regas a nation

2). On the oate interes

ed in the recase for anainted.

equirement(2) and 6, ater for unitao the patenoncept of “dependent ary effect ay effect shaed with. Whonth period said tranPO under Re of receipEPO wouldn following

in the interct should bduration ofhe public, national abe attribut

mber statesce they haistered, thanal patent other handst in obtainiequest and ny other pr

ts, both forare met. Inary patent nt proprietodate of regon the dur

at the EPOall be the dhere a requd of Rule 6

nslation is fRule 7(3), t by the EPd in fact reexaminati

rest of clarbe as f this procepatent offic

authorities sted to a gras have a p

ave to ensuat the Euroin their ter

d, patent pring possibin getting

rocedure g

rmal and n this caseprotection or. [Paragrgistration” sration of th

O. Pursuantdate on whuest for un6(1) but wifiled by thethen the d

PO of said egister unitaon of the r

22/84

rity, the

edure ces, should anted articular

ure, where opean rritory (see roprietors ilities to duly

governed

, the EPO and raph 1 so as to e t to this

hich all the nitary thout the e patent ate of

ary effect request for

4

r

SC/10/14 e 23/84 141320004

SC/10/14141320004

Pa3.pethsuexRefthre

In4.a thinpugimRofrem

Pa5.sure–rereotRbrA

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aragraph 2eriod of Ruhe request ubstantive xpiry of the

Rule 5(2) arffect has bhe EPO canemarks on

n cases (a)further tim

he patenteenviting the rursuant to ven the po

month perioRule 22(2)).f the requee-establish

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aragraph 3ubstantive equirementas usual in

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Rule 22(6)),rought beforticle 66 Ag

2 governs tule 6(1) anis filed afterequireme

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ails to obseremedy is a, i.e. the EPore the Ungreement o

three scend the subser the expients of Ruleth period o The fourth

by the pate a rejectionmore infor

e EPO will rcorrecting

ortunity to cto commen). It is prop

o request red in Rule 6ally speakithe patent

ghts in respof that perio

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y within a nerve this peavailable aPO takes aified Patenon a Unifie

narios: (a) tstantive reqry of the oe 5(2) are of Rule 6(1h possible nt proprietn in the abrmation on

reject the rdeficiencie

comment, int under Arposed thate-establish6(1) within ing, the EPt proprietorpect of the od.

where the oe 5(2) are not been fue the EPO non-extenderiod, re-esand the reqa final decint Court (seed Patent C

the requesquirementsne-month met; (c) th) and the sscenario,

tor, is not gbsence of an this scena

request fores. Before i.e. send orticle 113(1in case (b

hment of rigtwo month

PO may ther that he mperiod spe

one-monthmet but whulfilled. In s– give theable periodstablishmequest for unsion againee Article 3Court).

st is filed ws of Rule 5period of Re request substantivein which n

governed ba request. Sario.

r unitary efit does sout at least 1) EPC, wh) the requeghts in res

hs of expiryen, togetheay still reqecified in R

period of here any osuch a cas requesterd of one m

ent of rightsnitary effec

nst which a32(1)(i) in

within the on(2) are not

Rule 6(1) ais filed aftee requiremo request f

by paragraSee the ex

ffect withou, it will havone comm

hich applieester shouspect of they of that peer with the

quest Rule 6(1) w

Rule 6(1) aof the formase, the EPOr the oppor

month. If thes is ruled oct is rejecte

an action caconjunctio

24/84

ne-month t met; (b) and the er the

ments of for unitary ph 2 since

xplanatory

ut setting ve to give munication es ld be e one-eriod (see rejection

within two

and the al O would -rtunity to e

out, no ed (see an be n with

4

SC/10/14 141320004

CHAPTER

Rule 8

(1) PapEthU

(2) C

pr (a) sm

re (b) na (c) no

N (3) If

pr (4) If

reinpa

(5) Th

PE

e

CR II

D

roprietors pplication wnglish, Fre

heir residennion and th

ompensatiroprietor fa

mall and mecommend

atural pers

on-profit oro 1290/20

the patentroprietor is

the Europequest for unitial applicaragraphs

he compenCT applicauropean U

COMPENS

Definition a

of Europeawas filed inench or Gence or prinhey are an

ion for tranalling within

medium-sizdation 2003

sons; or

rganisation13, univers

t has multips an entity o

ean patentunitary effeant and th1 and 2.

nsation schations origiUnion other

SATION SC

and benef

an patentsn an officia

erman shalcipal place

n entity or a

nslation con one of th

ed enterpr3/361/EC d

ns as definsities and p

ple proprieor a natura

t applicatioect was filee proprieto

heme provnally filed r than Engl

CHEME

ficiaries

with unitaal languagel be entitlee of businea natural p

sts shall bee following

rises as dedated 6 Ma

ned in Articpublic rese

etors, compal person r

on or the Eed, compenor of the pa

vided for in at a receivlish, Frenc

ary effect foe of the Eued to compeess is in a mperson refe

e granted, g categorie

efined in Euay 2003;

cle 2, paragearch orga

pensation wreferred to

European pnsation wilatent fulfil t

paragraphving office ch or Germ

or which thuropean Unensation fomember sterred to in p

on requeses:

uropean C

graph 1(14nisations.

will be grain paragra

patent was l be grantethe conditio

h 1 shall alin an offici

man.

e Europeanion other tor translatitate of the paragraph

st, to a pate

ommission

4) of Regul

nted only iaph 2.

transferreed only if bons referre

lso apply toal languag

25/84

an patent than on costs ifEuropean 2.

ent

n

ation (EU)

f each

d before aboth the ed to in

o Euro-ge of the

4

f

SC/10/14141320004

Rule 8 – C

U1.unanlast

Be2.m

(a(b(c

Th3.

20reacsipebathS

Th4.papaprorsh

U5.tedeR20

e

Compensa

nder Rule nitary effecn EU officia

anguages) tate.

esides geomust also be

a) small anb) natural pc) non-prof

he definitio003/361/ECecommendctivity, irreszed enterpersons, whalance-shehe capital isME.

he definitioaragraph 1articipationrofit legal er which hashareholder

niversities exts, so detefinitions a

Rule 6 EPC014, OJ EP

ation sche

8(1), the sct granted al languagif their res

ographical e in one of

d medium-persons; orfit organisa

on of SMEsC of 6 May

dation definspective ofprises (SMhich have aeet total nos held dire

on of non-p1(14) of Ren in the framentity' meas a legal ors or individ

and publictails will be

as set out wC (cf. CA/97PO 2014, A

eme: defin

scheme is on the bas

ge other thaidence or p

location af the follow

-sized enter ations, univ

s is that sey 2003 on nes an entef its legal foEs) is madan annual tot exceedinctly or indi

profit organegulation (Emework pr

ans a legal r statutory dual memb

c researche presentewith a view7/13 Rev. 1A23).

nition and

open to prsis of an apan Englishprincipal p

nd languagwing catego

erprises (S

versities an

et out in Eumicro, smaerprise as orm. The cde up of enturnover nong EUR 43rectly by a

nisations isEU) No. 12rogramme entity whic

y obligationbers.

organisatid in an EP

w to the am1 and the n

beneficia

roprietors opplication t, French alace of bus

ge used, bories:

SMEs);

nd public re

uropean Coall and medany entity

category ofnterprises wot exceedi

3m, and foranother com

s that set o290/2013 lafor researc

ch by its len not to dist

ions are noPO notice, rmendment onotice from

aries

of Europeathey themsnd Germasiness is in

beneficiarie

esearch or

ommissiondium-sizedengaged if micro, smwhich empng EUR 50r which no mpany whi

out in Articlaying downch and inn

egal form istribute prof

ot expressreflecting tof the scop

m the EPO

an patents selves haven (the EPO

n an EU me

es of the sc

rganisation

n recommed enterprisn an econo

mall and meploy fewer t0m or an amore than

ich is itself

e 2, n the rulesovation. T

s non-profitfits to its

ly defined these bodiepe of applicdated 10 J

26/84

with e filed in O official ember

cheme

ns.

endation es. The omic edium than 250

annual n 25% of f not an

s for hus, 'non-tmaking

in EU es' cation of January

4

SC/10/14 e 27/84 141320004

SC/10/14141320004

To6.

pamel

Th7.enfuthfoorcoty

Th8.exreBinleA

e

o prevent aatent in ord

multiple proigibility req

he rule's pntity that filulfilled whehose submollowing a triginal appompensatioype of entit

he schemexpressly steceiving offureau) in a

nternationaegally equivrticle 5 of R

abuse, sucder to qualprietors, coquirements

aragraph 1led the pat

en the Euroitted after otransfer or licant and on) fulfil thy.

e applies totated in Rufice in the an EU (butal applicatiovalent to a Regulation

ch as makiify for the ompensatis.

1 governs tent applicaopean pateownershipmerger); hthe new owe eligibility

o Euro-direule 8(5), to 23 countrie

t non-EPO)on for whicregular Eu

n (EU) No.

ng a naturscheme, Ron will be

compensaation; in su

ent applicat of the apphere, compwner (for ty criteria as

ect applicaEuro-PCTes eligible ) official la

ch the EPOuropean ap1260/2012

ral person oRule 8(3) pgranted on

ation requeuch cases,tion is filedplication orpensation whe latter ws regards n

ations filed T applicatio

for the schnguage. U

O is a desigpplication, 2.

or SME a crovides thanly if each

ests submit the eligibi

d. Its paragr patent hawill be gran

when requenot only na

at the EPOons originaheme (or thnder Articl

gnated or eand as su

co-proprietat if there aof them fu

tted by thelity criteria

graph 4 govs changednted only if

esting ationality b

O and alsolly filed at he Internatle 153(2) Eelected offich is cove

28/84

tor of the are lfils the

same a must be verns

d (e.g. f both the

ut also

o, as a PCT tional EPC, an ce is red by

4

SC/10/14 e 29/84 141320004

Rule 9 Request for compensation

(1) The proprietor of a European patent who wishes to benefit from compensation under Rule 8 must file a request for it together with the request for unitary effect referred to in Rule 6.

(2) The request for compensation for translation costs shall contain a declaration that

the proprietor of the European patent is an entity or a natural person referred to in Rule 8, paragraph 2.

SC/10/14 e 30/84 141320004

Rule 9 – Request for compensation 1. Proprietors have to file their request for compensation with the EPO after grant of

the European patent, together with their request for unitary effect. That is in line with the texts adopted; under recital 10 of Regulation (EU) No. 1260/2012 the compensation should go to "certain applicants obtaining European patents with unitary effect". Although translation costs will then be reimbursed some time (three to four years) after they were actually incurred, this possibility of subsequent reimbursement shall be seen as an incentive for SMEs to opt for unitary protection.

2. Rule 9 stipulates that the request for compensation must be filed with the EPO at

the same time as the request for registration of unitary effect, i.e. no later than one month after publication of the mention of grant of the European patent in the European Patent Bulletin (see Rule 6); no longer period for filing it is envisaged. The request forms for unitary effect will also include a box for requesting compensation; proprietors will merely have to tick the box.

3. Together with the request for compensation the proprietor must submit a solemn

declaration that he (and the initial applicant, if a transfer of ownership has occurred) fulfils the eligibility requirements under Rule 8. He must make this declaration on an EPO form. The EPO does not plan to require him to provide supporting documents about his status, and will not normally verify the veracity of the declaration. It may however conduct spot checks before granting compensation.

SC/10/14 e 31/84 141320004

Rule 10 Examination of the request and grant of compensation

(1) After the European Patent Office has registered the unitary effect of the European patent in the Register for unitary patent protection and has examined the request for compensation, it shall inform the patent proprietor whether that request has been granted or rejected.

(2) Once granted, compensation shall not be rescinded, even if, as a result of

changed circumstances, the proprietor no longer qualifies for it under Rule 8. (3) Should the Office have reason to doubt the veracity of the declaration filed under

Rule 9, paragraph 2, it shall invite the patent proprietor to provide evidence that he fulfils the requirements of Rule 8, paragraph 2. Articles 113(1) and 114 EPC shall apply.

(4) If the Office finds that the compensation was granted on the basis of a false

declaration, it shall invite the patent proprietor to pay, together with the next renewal fee falling due, an additional fee composed of the amount of the compensation paid and an administrative fee as laid down in the Rules relating to Fees. If this additional fee is not paid in due time, the European patent with unitary effect shall lapse under Rule 14.

SC/10/14 e 32/84 141320004

Rule 10 – Examination of the request and grant of compensation 1. The EPO will quickly examine requests for compensation according to Rule 10(1)

to make sure that the request for unitary effect has indeed been filed, that all proprietors have made the necessary declaration, and that there are no doubts as to the declaration's veracity. After these simple checks, the EPO will notify the proprietor that it is granting compensation and pay it to him. Compensation cannot be paid until the European patent's unitary effect has been entered in the Register for unitary patent protection. This compensation is to be covered by the renewal fees for European patents with unitary effect, which means that it cannot be granted until unitary effect is registered, as opposed to merely requested.

2. Once compensation is granted, the proprietor will keep it whatever happens to his

status, e.g. he no longer fulfils the SME criteria or assigns his unitary patent to a new proprietor who does not meet the eligibility requirements under Rule 8(2).

3. However, if the EPO has serious doubts about the veracity of the declaration filed

with the compensation request, e.g. because of information from a third party, under Rule 10(3) it could exceptionally review its grant of the compensation, and ask the beneficiary to provide evidence (such as a copy of his balance sheet or a declaration about how many person he employs) that he fulfils the eligibility criteria. Proceedings under Articles 113(1) and 114 EPC would then ensue.

4. If, at the end of these proceedings, the Office believes that a false declaration has

been made, it will inform the beneficiary under Rule 10(4) that it has revised its decision to grant the compensation, and require him to refund the sum paid, in the form of an additional fee when paying the next renewal fee for his unitary patent (possibly within the six-month grace period). This additional fee will be equal to the translation costs paid, plus an administrative fee to cover processing costs. The administrative fee will be laid down, in the rules relating to fees, at 50% of the amount of compensation paid. If this additional fee is not paid in due time, his unitary patent will lapse under Rule 14(1).

5. Decisions taken by the Office in administering the compensation scheme

procedures described above are appealable before the Unified Patent Court.

SC/10/14 e 33/84 141320004

Rule 11 Level of compensation

Reimbursement of translation costs shall be made up to a ceiling and paid in the form of a lump sum, in accordance with the Rules relating to Fees. The ceiling shall be fixed on the basis of the average length of a European patent and the average translation cost per page, taking account of the average reduction granted under Rule 6 EPC.

SC/10/14 e 34/84 141320004

Rule 11 – Level of compensation 1. The level of compensation is fixed in the form of a lump-sum. The lump sum paid

constitutes the ceiling on the reimbursement of all translation costs, under Article 5(1) of Regulation (EU) No. 1260/2012. For real translation costs below this ceiling, the scheme will bring requesters financial advantages which go beyond what is foreseen in Article 5 of Regulation (EU) No. 1260/2012.

2. The reimbursement ceiling takes account of the average length of European patent

specifications and the average cost of translating a text from one of the 21 EU but non-EPO official languages into English, French or German.

3. Lastly, the level of compensation must take account of the reductions granted on

filing and during examination, under Rule 6 EPC and Article 14 Rules relating to Fees (EPC), for the same categories of applicant.

4. The lump sum fixed in the rules relating to fees (for unitary patent protection) will be

reviewed periodically as further technical progress in machine translation enable applicants to obtain translations more cheaply.

SC/10/14 141320004

CHAPTER

Rule 12

(1) ThthinreofRpa

(2) Th

conoth

(3) Th

licre

(4) N

prbe

e

LR III

F

he propriethe Europeanvention asenewal feef the statem

Rules relatinatent prote

he statemeommunicatot take effehe Europea

he statemecence is reecording of

o request frotection seen filed, u

LICENCES

Filing of th

tor of a Euan Patent Os a licensees for the Ement shall ng to Feesection.

ent referredtion to thisect until thean Patent O

ent referredecorded in f such a lic

for recordihall be adm

unless that

S OF RIGH

he stateme

ropean paOffice that e in return

European pbe reduce

s. The state

d to in para effect to the amount bOffice.

d to in parathe Regist

cence is pe

ng an exclmissible aft statement

HT

ent by the

atent with uhe is prepfor approp

patent with ed; the amoement sha

agraph 1 mhe Europeby which th

agraph 1 mter for unitaending befo

lusive licenfter the stat is withdra

patent pr

unitary effepared to allopriate compunitary eff

ount of thell be entere

may be witean Patent he renewa

may not beary patent ore the Eur

nce in the Ratement refawn.

roprietor

ect may fileow any pepensation.fect which reduction ed in the R

hdrawn at Office. Sul fees were

e filed as loprotection ropean Pa

Register foferred to in

e a statemeerson to us

In that casfall due aftshall be fix

Register for

any time bch withdrae reduced

ong as an eor a reque

atent Office

or unitary pn paragraph

35/84

ent with e the se, the ter receipt xed in the r unitary

by a awal shall is paid to

exclusive est for the e.

patent h 1 has

4

SC/10/14141320004

Rule 12 –

A1.EthlicspcoNtoadthre

A2.taanprst

P3.Arespwef

Pa4.rest

e

– Filing of

rticle 8(1) uropean p

hat the propcensee in rpecifies thaontractual o 1257/20

o in Articledds that thhe time theegulation.

rticle 9(1)(ask of recend their witroprietor oftandardisat

roposed Rrticle 8 Re

enewal fee pecifies tha

with Article 9ffect if the

aragraph 3egister. Partatement h

a stateme

Regulationatent with prietor is preturn for aat a licencelicence. In12, renewa8(1) of saie patent p

e EPO rece

c) Regulativing and rthdrawal, af the Euroption bodies

Rule 12(1) lgulation (Ereduction

at the state9(1)(c) Regamount by

3 deals witragraph 4 as been fil

ent by the

n (EU) No unitary eff

prepared toappropriatee obtained accordancal fees whid regulatioroprietor s

eives the st

tion (EU) Nregistering and of licenpean patens.

ays down EU) No 125

will be fixeement can gulation (Ey which the

th cases wspecifies tled, unless

patent pr

1257/2012fect may filo allow anye compens under thece with Artich fall dueon will be rehould get atatement re

No 1257/20the statem

nsing the cnt with unit

the proced57/2012 aned in the Rbe withdra

EU) No 125e renewal f

here an exhat no exc

s it is withd

roprietor

2 provides e a statem

y person tosation. Parae Regulatioticle 11(3) e after receeduced. Ra reductioneferred to

012 providements on liccommitmentary effect

dure for filind specifie

Rules relatinawn by the57/2012. Tfees were r

xclusive licclusive licedrawn.

that the prment with tho use the inagraph 2 o

on will be trRegulation

eipt of the secital 15 on of the renin Article 8

es that thecensing rents undertain internati

ng the states that the ng to Fees

e proprietorThe withdrareduced is

ence is recnce may b

roprietor ofhe EPO to nvention asof that provreated as an (EU) statement

of the regulnewal fees8(1) of the

e EPO is gieferred to inaken by theional

tement refeamount of

s. Paragrapr at any timawal will ons paid to the

corded in tbe recorded

36/84

f a the effect

s a vision a

referred ation

s as from

ven the n Article 8 e

erred to in the

ph 2 me, in line nly take e EPO.

the d after a

4

SC/10/14 e 37/84 141320004

SC/10/14141320004

P5.hathdiapanlic

e

ursuant to ave exclushe basis of spute, the ppropriate nd Rule 8(cence agre

Article 32(sive compe

Article 8 RUnified Pacompensa1) if a requ

eement.

(1)(h) Agreetence in reRegulation atent Couration referruest for sam

eement on espect of a(EU) No 1

rt will have red to in Arme is mad

a Unified actions for 257/2012.to determ

rticle 8 Rege by one o

Patent Coucompensa. Thereforeine the amgulation (Eof the contr

urt, the Coation for lice, in the ca

mount of theEU) No 125racting par

38/84

ourt will cences on ase of e 57/2012 rties to the

4

SC/10/14 141320004

CHAPTER

Rule 13

(1) RlainEP

(2) A

yedawbe

(3) If

of (4) A

wpaad

(5) A

ofwpuPcoUfewpe

(6) R

e

RR IV

P

Renewal feeate paymenn respect ofuropean patent Bulle

renewal feear shall beate of filing

with unitary efore they

a renewal f the due d

ny renewawithin three atent shall dditional fe

renewal fef the retroa

would have ublication oatent Bulleommunicatnified Pate

ee and anywithin four meriod, para

Rule 51, par

RENEWAL

Payment o

es for Euront shall be f the yearsatent whic

etin.

ee for the Ee due on thg of the Eueffect. Refall due.

fee is not date, provid

al fee in resmonths ofbe deeme

ee shall be

ee in respeactive effecfallen dueof the menetin up to ation referreent Court ay renewal femonths of tagraph 3 sh

ragraphs 4

L FEES

of renewal

opean patepaid to the

s following ch benefits

European he last dayropean panewal fees

paid in duded that an

spect of a Ef the publiced to have charged in

ect of a Euct provided under par

ntion of theand includined to in Ruattributing uee due witthat latter dhall apply.

4 and 5 EP

fees for E

ents with ue Europeanthe year infrom unita

patent withy of the motent applic

s may not b

e time, then additiona

European cation of thbeen validn this case

ropean pad for in Articragraph 2 i grant of thng the date

ule 7(1) or tunitary effehin four modate withou

PC shall ap

European

nitary effecn Patent On which theary effect is

h unitary efonth contaication whicbe validly p

e fee may sal fee is als

patent withhe mentiondly paid if ite.

atent with ucle 4(1) Ren the periohe Europeae of the nothe notificaect shall bonths of thut an addit

pply mutatis

patents w

ct and addOffice. Those mention s published

ffect in resining the a

ch led to thpaid more

still be paidso paid with

h unitary ef of the grat is paid wi

unitary effeegulation (od starting an patent i

otification oation of thee due on t

hat latter dational fee.

s mutandis

with unitar

itional feesse fees shaof the grand in the Eu

spect of thenniversarye Europeathan three

d within sixhin that pe

ffect fallingant of the E

thin that p

ect which, bEU) No 12on the dat

in the Euroof the e decision ohat latter date may stIf not paid

s.

39/84

ry effect

s for their all be due nt of the ropean

e coming y of the an patent e months

x months riod.

g due European eriod. No

by virtue 257/2012, te of opean

of the date. This ill be paid within this

4

s

SC/10/14141320004

Rule 13 –

In1.prwERshgrE

P2.alalif papere

If 3.copaththha

If 4.sepuundeCFare

A5.reRde

e

– Payment

n accordanroposed pa

where applicuropean p

Rules relatinhall be duerant of the uropean P

roposed pamost identigned withthe renewaragraph 4eriod is extequesting u

the renewourtesy seraid for the he Europeahe fee, plusaving alrea

the renewend a comursuant to nitary effececision witourt, so anailure to paedressed u

lternativelyeview of the

Rule 112(2)ecision cou

t of renew

ce with Artaragraph 1cable, addatent with ng to Feese in respecEuropean

Patent Bulle

aragraph 2tical to the

h Rule 51(2al fees hav

4 provides tended to tunitary effe

wal fee has rvice (and European

an patent ws an additioady begun.

wal fee is nomunicationRule 20(2

ct of the loshin the men action caay the reneusing re-es

y, if the finde finding c) EPC, saiduld then be

al fees for

ticles 9(1)( sets out titional feesunitary eff

s. Renewalct of the ye patent whetin (see a

2 provides wording o

2) EPC, whve not beefor the safthree montect.

not been pas is the cpatent app

with unitaryonal fee, in.

ot paid withn under Ru)(d)), notifyss of rightseaning of Aannot be brewal fee wtablishmen

ding of thecan be requd rule applye brought b

r Europea

(e) and 11 the obligatis in the evefect, the am fees for thars followin

hich benefitlso Article

for the dueof Rule 51(hich providn paid on o

fety period ths in view

paid on thecurrent praplication uy effect as n the six m

hin the addule 112(1) ying the prs. The comArticle 32(1rought aga

within the adnt of rights

EPO causuested by aying mutatbefore the

an patents

Regulationion to pay ent of their

mount of thhe Europeang the yeats from uni141(1) EP

e date of p1) EPC. Pes for an aor before tof Article

w of the pos

e due datectice with rnder Articlsoon as poonths follo

ditional six-EPC (whic

roprietor ofmmunicatio

)(i) Agreemainst it befodditional siunder Rul

sing the losapplying fotis mutandiUnified Pa

with unita

n (EU) No the EPO rer late paymhe fees beian patent war in which itary effect

PC).

payment ofroposed paadditional pthe due da141(2) EPCst-grant pro

, the EPO respect to e 86 EPC)ossible of t

owing the d

-month pech applies f the Europn does notment on a ore the Unifix-month ple 22.

ss of rightsor a decisiois. An actioatent Court

ary effect

1257/2012enewal fee

ment, for thng laid dowwith unitarythe mentio

t is publish

f renewal fearagraph 3period of ste. ProposC, althougocedure fo

will informrenewal fe

), the proprthe option

due date, th

riod, the Emutatis mu

pean patent constituteUnified Pafied Paten

period can

s is inaccuon under on against t.

40/84

2, es and, e wn in the y effect on of the ed in the

ees and is 3 is fully ix months

sed h the

or

m, as a ees to be rietor of of paying hat period

EPO will utandis nt with e a atent t Court. be

rate, a

that

4

SC/10/14 e 41/84 141320004

SC/10/14141320004

Th6.(sda13noth

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he computsee Rule 20ate falls on34(1) EPCot changedhe last day

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month addiin Rule 13ays, mail inxpiry of thehe first wor

for the paysixth montmonth cormutatis mue last day oue date is not 28 Aug

non-paymeapse of theulation (EUe date.

4 reiteratesperiod to thf the grant no addition

e course ofnning fromunder Rulethin the thr

s to be effece with thennot receivatis mutandonstitute a deferred to

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ent of the ree EuropeanU) No 1257

s the contehree monthin the Euronal fee will f the six-mo

m the due de 13(3) doeree-month

ected undee current EPve mail withdis under Rperiod whio the first w

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n or strike. h additiona

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e, and wheith unitary e Rule 14(

le 141(2) Eree-month ent Bulletinhere the red under Ru

ever, Rule e to be pairiod.

31 and 134ce: when thaning of R(g)), the duextended.

ay thereafte

rts on the laceive mail Rule 134(eferring th

ditional feeto Rule 13ue date (sehus, the cathe month he six-monthe applica

ere applicaeffect in ac

(1)(b)). The

EPC and eperiod sta

n (see Articenewal feeule 13(3) is13(4) has id where th

42/84

4 EPC he due

Rule ue date is . Instead, er.

ast day of on that 1) EPC is e last day

e expires 3(2)) and ee Rule

alculation (de ultimo

nth period ation of

ble, ccordancee lapse

xtends arts on the cle 97(3) is paid s the effect he

4

SC/10/14 e 43/84 141320004

SC/10/14141320004

P11.grinrereenthefERRonEcoUanfopew

P12.mefeswsu

e

roposed parant of the

n particular egistering ue-establishnd of such he patent pffect takes uropean p

Regulation (Regulation (n the date uropean Pommunicatnified Patend (5) EPCour monthseriod, Rule

within six m

roposed pamutandis. Rffect lapsesstablishme

where a petuccessful.

aragraph 5Europeanoccur in e

unitary effement of riga procedu

proprietor beffect on tatent in the(EU) No 12(EU) No 12of publicat

Patent Bulletion referreent Court aC, which aps of the note 13(3) apponths, star

aragraph 6Rule 51(4) Es due to th

ent of rightstition for re

5 covers th patent but

exceptionalect takes aghts or the ure, the deby the EPOthe date ofe Europea257/2012. 257/2012),tion of the etin and uped to in Ruattributing upply mutatitification wplies, i.e. thrting from t

6 provides EPC refers

he non-pays is succesview or a r

he case wht before thl circumsta long time involvemecision to re

O or the UPf publication Patent BOwing to t, renewal fmention o

p to and incule 7(1) or tunitary effeis mutandiithout any he fees canthe date of

that Rule 5s to the casyment of ressful. Rule rehearing u

here the ree unitary e

ances wheowing, for

ent of the Uegister unitPC, the Euon of the mBulletin in athis retroacfees are thef the grantcluding thethe notificaect. Hences, the reneadditional n still be paf notificatio

51(4) and se where a

enewal fees51(5) gove

under Artic

newal feeseffect is regre the procr example, Unified Pattary effect ropean pat

mention of taccordancective effecten due for t of the Eure date of thation of the, by analog

ewal fees cfee. If not aid with an

on.

(5) EPC doa Europeans and a reqerns the an

cle 81 UPC

s fall due agistered. Tcedure for to a reque

tent Court. is finally ntent with uhe grant oe with Artict (see Recithe period

ropean pathe notificate decision ogy with Rucan be paidpaid within

n additiona

o apply mun patent wquest for renalogous s

C Agreeme

44/84

after the his could

est for If, at the otified to nitary f the

cle 4(1) ital 8 d starting tent in the tion of the of the le 51(4) d within n this

al fee

utatis with unitary e-situation ent is

4

SC/10/14 141320004

CHAPTER

Rule 14

(1) A (a) 20 (b) if

ac (b) if

an (2) Th

anth

e

LR V

L

European

0 years aft

the proprieccordance

a renewal ny addition

he lapse ond any addhe date on

LAPSE

Lapse

n patent wit

ter the date

etor of the with Rule

fee or the nal fee hav

of a Europeditional feewhich the

th unitary e

e of filing o

European 10;

amount unve not been

ean patent e within therenewal fe

effect shall

of the Euro

patent wit

nder Rule n paid in du

with unitare due perioee was due

l lapse:

pean pate

th unitary e

7, paragraue time.

ry effect food shall be e.

nt applicat

effect surre

aph 3, and,

or failure todeemed to

tion;

enders it in

, where ap

o pay a reno have occ

45/84

plicable,

ewal fee curred on

4

SC/10/14141320004

Rule 14 –

Th1.unEoftimR

It 2.papare

e

– Lapse

he proposenitary effecPC which f filing of thme of a ren

Regulation (

is proposearagraph 1atent with uenewal fee

ed rule sumct lapses. Pprovides th

he applicatnewal fee a(EU) No 12

ed that the 1(b) shouldunitary effewas due.

mmarises tParagraphhat the termtion. Paragand, where257/2012).

date of effd be specifect is deem

the situatio1(a) of the

m of the Egraph 1 (b)e applicabl.

fect of the fied: in sucmed to hav

ons in whice proposeduropean pcovers the

le, any add

lapse in thh a case, t

ve occurred

ch the Eurod rule refleatent is 20e case of nditional fee

he case refthe lapse od on the da

opean patects Article

0 years fromnon-paymee (see Artic

ferred to inof a Europeate on whic

46/84

ent with 63(1)

m the dateent in due cle 11(2)

n ean ch the

4

SC/10/14 141320004

PART III

CHAPTER

Rule 15

(1) ThREE

(2) Eofla

e

IN

RR I

E

he RegisteRegulation (

uropean PPC.

ntries in thfficial langu

anguage of

NFORMAT

REGISTER

Establishm

er for unita(EU) No 12

Patent Reg

he Registeruages of thf the proce

TION TO T

R FOR UNI

ment of the

ry patent p257/2012 iister kept b

r for unitaryhe Europeaedings sha

THE PUBL

ITARY PA

e Register

protection ps hereby eby the Euro

y patent pran Patent Oall be authe

LIC

TENT PRO

r for unita

provided foestablishedopean Pat

rotection sOffice. In centic.

OTECTION

ry patent

or in Articled as a specent Office

hall be macase of dou

N

protection

e 9, paragrcial part of under Artic

ade in the tubt, the en

47/84

n

raph 1(b), the

cle 127

three ntry in the

4

SC/10/14141320004

Rule 15 –

Se1.

e

– Establish

ee the exp

hment of t

planatory re

the Regist

emarks be

ter for uni

low under

tary paten

Rule 16.

nt protectiion

48/844

SC/10/14 e 49/84 141320004

Rule 16 Entries in the Register for unitary patent protection

(1) The Register for unitary patent protection shall contain the following entries: (a) date of publication of the mention of the grant of the European patent; (b) date of filing of the request for unitary effect for the European patent; (c) particulars of the representative of the proprietor of the European patent as

provided in Rule 41, paragraph 2(d), EPC; in the case of several representatives, only the particulars of the representative first named, followed by the words "and others" and, in the case of an association referred to in Rule 152, paragraph 11, EPC, only the name and address of the association;

(d) date and purport of the decision on the registration of unitary effect for the

European patent; (e) date of registration of the unitary effect of the European patent; (f) date of effect of the European patent with unitary effect pursuant to Article 4,

paragraph 1, Regulation (EU) No 1257/2012; (g) participating Member States in which the European patent with unitary effect has

unitary effect pursuant to Article 18, paragraph 2, Regulation (EU) No 1257/2012; (h) particulars of the proprietor of the European patent with unitary effect as provided

for in Rule 41, paragraph 2(c), EPC; (i) family name, given names and address of the inventor designated by the applicant

for or proprietor of the patent, unless he has waived his right to be mentioned under Rule 20 paragraph 1 EPC;

(j) rights and transfer of such rights relating to the European patent with unitary effect

where the present Rules provide that they shall be recorded at the request of an interested party;

SC/10/14141320004

Rule 16 – I. G

A1.sttatoinRNreefpa

In2.undeA

Fo3.unRThunPawen

e

– Entries in

General

rticle 9 Retates will, wasks to be co Article 9(1nclusion of Register and

o 1257/20egister conffect and aatent with u

n accordannitary pateedicated, prticle 127 E

or reasonsnitary pate

Register covhis will be nitary pateatent Regi

will ensure anvisaged to

n the Reg

gulation (Ewithin the mcarried out1)(b) Reguthe Registd the admi12, specifistituting pa

any limitatiounitary effe

ce with theent protectiopart of the EPC.

s of legal ceent protectiovering all eadequately

ent protectioster and tha smooth ho the Regi

ister for u

EU) No 125meaning oft in conform

ulation (EUter for unitainistration tes that "Reart of the Eon, licenceect are reg

e above pron is herebpresent Eu

ertainty anon will be sentries requy reflectedon. Stronghe Registehandling byster of the

unitary pat

57/2012 sef Article 14mity with th) No 1257/ary patent thereof. Aregister for

European P, transfer,

gistered."

rovisions, Rby establisuropean Pa

nd transparset up as auired for th

d in the onlg interactior for unitary the usersUnified Pa

tent protec

ets out that43 EPC, givhe "interna/2012, thesprotectionrticle 2(e) Runitary pa

Patent Regrevocation

Rule 15 proshed as anatent Regi

rency for tha separatehe Europeaine architen betweenry patent ps. Appropriatent Cour

ction

t the particve the EPO

al rules" of se tasks co within theRegulationtent protec

gister in whn or lapse o

ovides that integral buster kept b

he users, t part of thean patent wecture of th the classirotection (iate links crt.

cipating meO some adthe EPO. Pomprise th

e Europeann (EU) ction meanhich the unof a Europe

t a Registeut special, by the EPO

he Registee Europeanwith unitarye Registercal Europee.g. by inte

can also be

50/84

ember dditional Pursuant

he n Patent

ns the nitary ean

er for i.e.

O under

er for n Patent y effect. r for ean erlinking) e

4

SC/10/14 e 51/84 141320004

(k) licensing commitments undertaken by the proprietor of the European patent with unitary effect in international standardisation bodies pursuant to Article 9, paragraph 1(c), Regulation (EU) No 1257/2012, where the proprietor requested their registration;

(l) date of filing and date of withdrawal of the statement provided for in Rule 12; (m) date of lapse of the European patent with unitary effect; (n) date of receipt of a declaration of surrender of the proprietor of the European

patent with unitary effect; (o) data as to the payment of renewal fees for the European patent with unitary effect,

including, where applicable, data on the payment of an additional fee pursuant to Rule 13(3);

(p) a record of the information communicated to the European Patent Office

concerning proceedings before the Unified Patent Court; (q) a record of the information communicated to the European Patent Office by the

central industrial property offices, courts and other competent authorities of the participating Member States;

(r) date and purport of the decision on the validity of a European patent with unitary

effect taken by the Unified Patent Court; (s) date of receipt of request for re-establishment of rights; (t) refusal of request for re-establishment of rights; (u) date of re-establishment of rights; (v) dates of interruption and resumption of proceedings;

SC/10/14141320004

II. E

Th4.sehaenNad

III. Panco

R5.

protmev

It 6.menseuntosh

A 7.patraundodeha

e

ntries in t

he Registeet out in Reas been rentries to tho 1257/20dditional en

rocedurend other ronjunction

Regulation (rocedure fother rights

means of exvidence an

is thereformade in thensures full ets out thatnitary effeco 24 EPC ahall be reco

Europeanarticipatingansfer of anitary pateocuments eemed notas been pa

he Regist

er for unitaegulation (

egistered ae Register12 is far frontries, the

for enterinrights andn with Rul

(EU) No 12or registeri(such as r

xecution, innd adminis

re proposee Register f

alignmentt rights andct shall be applying morded at th

n patent witg member sa Europeanent protectiosatisfying tt to have baid (Rules

er for unit

ry patent p(EU) No 12nd the datr for unitaryom being eprovision s

ng transfe any legalle 20(2)(b)

257/2012 ding transferights in remn particulartrative fee

ed that Rulefor unitary t with the cd transfer oregisteredutatis muta

he request

th unitary estates (Artn patent wion at the rthe EPO theen filed u22(1) and

tary paten

protection h257/2012, e of that rey patent prexhaustiveserving as

ers, licencl means of))

does not coers, licencem, pledgesr as to the .

es 22 to 24patent pro

current EPOof such rig where theandis pursof an inter

effect may ticle 3(2) Rith unitary equest of ahat such truntil such ti(2) EPC).

nt protectio

has to contin particulaegistration.rotection ofe, it is prop

model bei

ces (includf executio

ontain anyes (includins, security required r

4 EPC appotection (seO practice.hts relating

e present Ruant to Rurested part

only be traRegulation

effect is rean interestansfer hasime as the

on

tain all thear the fact t. However,f Regulatioosed to seing Rule 14

ding compon (Rule 16

y provisionsng compulsinterests eequest, do

ply mutatis ee Rule 20. Accordingg to the Eu

Rules (whicule 20(2)(b)ty.

ansferred i(EU) No 12

ecorded in ted party as taken pla prescribed

e entries exthat unitary, since the on (EU) et up a list o43(1) EPC

pulsory lic6(1)(j) in

s as regardsory licenceetc.) and anocumentary

mutandis (2)(b)). Thgly, Rule 1uropean pach include )) provide t

in respect 257/2012)the Registnd on prod

ace. The red administ

52/84

xpressly y effect list of

of C.

cences)

ds the es) and ny legal y

to entries is 6(1)(j)

atent with Rules 22 that they

of all the . The ter for duction of

equest is trative fee

4

SC/10/14 e 53/84 141320004

(w) date of issuance and date of expiry of a supplementary protection certificate for a

product protected by the European patent with unitary effect as well as the participating Member State issuing it.

(2) The President of the European Patent Office may decide that entries additional to

those referred to in paragraph 1 shall be made in the Register for unitary patent protection.

SC/10/14141320004

A8.in(othcethinco

Th9.licre

If 10.reIf rebedeU

e

ny kind of ncludes formoriginal or ahat they dirertified cophree officianto one of tontract ver

he above pcences andequires the

the evidenequesting tthe reques

egistered ween receivecisions renitary Pate

written evimal documa copy therectly verifypy of the dol languagethe official rifying the t

principles od rights in

e filing of th

nce presenthe transfest complies

with the dated by the E

egarding enent Protect

dence suitmentary proreof) or othy the transfocument. Wes of the EPlanguagestransfer is

on standarrem. The r

he instrume

nted is founr accordings with the rte on whichEPO, whicntries in thtion Divisio

table to prooof such asher official fer. In caseWhere the PO, the EPs. A declaraalso suffic

rds of prooregistrationent (origina

nd to be ungly and invrequiremenh the reque

chever is the Register

on.

ove the tras the instrudocumente of doubt,original do

PO may reation signeient.

of also appln of legal mal or copy)

nsatisfactovites it to rents of Ruleest, the reqhe latest. Tr for unitary

ansfer is adument of trts or extrac, the EPO ocument isquire a cered by both

ly to the remeans of ex

itself.

ry, the EPOemedy the e 22(1) EPquired evid

The compey patent pr

dmissible. Transfer itsects thereofmay ask fo

s not in onertified transparties to

egistration oxecution, h

O informs stated def

C, the trandence or th

etent deparrotection is

54/84

This elf , provided or a e of the slation the

of however,

the party ficiencies.

nsfer is he fee has rtment for s the

4

SC/10/14 e 55/84 141320004

SC/10/14141320004

A 11.pa(ErisAEm(Ethex

A 12.exrereE

U13.resath

IV. Rpr

P14.

mcoef

P15.capaofneasav

e

Europeanart of the teEU) No 125se to rightsrticle 7 Reuropean p

member staEU) No 125he grant, esxecution af

licence wixclusive licecorded asecorded in PC). See e

pon requeegistered liatisfying thhe right tha

Registratioroprietor o

ursuant to member staommitmentffect in inte

ublishing tan give paratent numbf licence coecessary fossurances vailable to

n patent witerritories o57/2012). Is in rem angulation (Eatents with

ates as reg57/2012). Rstablishmeffecting a E

ill be recorcence if thes a sub-licethe Regist

explanator

est and subcences an

he EPO thaat he conse

on of licensof the Eur

Article 9(1ates shall gts underta

ernational s

he licencinrties intereber, patentommitmenor the succto implemparties se

th unitary eof the particIt may, in rnd may be EU) No 125h unitary efards their Rule 22(1)ent or transEuropean p

rded in the e applicantence whereter for unitary remarks

bject to thed other rig

at the right ents to the

sing commropean pat

1)(c), Regugive the EPken by thestandardis

ng commitmested in impt claims, tht. This cancessful widenters of teking to lic

effect may cipating merespect of athe subjec

57/2012). Mffect are gorespective and (2) E

sfer of suchpatent with

Register ft and the lice it is grantary patent 8 and 9 as

payment oghts are ca

has lapsecancellatio

mitments:tent with u

ulation (EUPO the taske proprietoration bodie

ments in thplementing

he proprieton facilitate tdespread athe standarcense them

be licenseember statall the partct of legal mMoreover, overned by

e territoriesPC do alsoh rights anh unitary ef

for unitary censee soted by a licprotections to the sta

of the presncelled ond, or of a don (Rule 2

: only on eunitary eff

U) No 1257k to receiver of the Eues.

he Registeg a certain or to addrethe bilateraadoption ofrd that the

m.

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patent prot require. A

censee wh (see Rule

andard of p

scribed adm productio

declaration3(2) EPC)

express refect (Rule

/2012, the e and regisropean pat

r for unitarstandard a

ess for liceal licensingf a standarpatented t

ect of the we 3(2) Regumember staexecution (ry licencesof the parttal 10 Regthe registra

al means oRule 23(1)

tection as A licence wose licence

es 24 (a) anproof.

ministrativen of docum

n of the pro.

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participatister licensitent with u

ry patent pan overviencing and g negotiatiord and to ptechnologi

56/84

whole or ulation ates, give (see s for ticipating

gulation ation of f EPC).

an will be

e is nd (b)

e fee, ments oprietor of

the

ng ng nitary

rotection ew of the

the type ons

provide es will be

4

SC/10/14 e 57/84 141320004

SC/10/14141320004

Th16.haasunvoupinfilun

O17.unreR

V. S

It 18.ofheofAon

Th19.sugolainEor

In20.Inav

e

herefore, tave the licessociation nitary pateoluntary, npon expres

nformation ed by the pndertaken

Once a licennitary effecegistered in

Rules 22 to

urrender o

is proposef a declarae surrendef receipt ofrticle 3(2) nly be surr

he validity urrender isoverns the

aw applies ncluding thePO will mer partial su

n case of a nstead, thevailable to

here may ensing combut also to

ent protectioot subject ss request will be pubpatent proin Europea

nce has bect as a resun the Regis24 EPC w

of the Eur

ed to enabation filed bers his Eurof the declarRegulationrendered w

of the surrs to be sube Europeanboth to thee questionerely act asrrender.

partial sure new set o

the public

be an intermmitment mo the outsidon. The ento the payby the pat

blished by prietor for an and inte

een granteult of the lister for uni

which apply

ropean pat

le the regisby the propopean pateration of sun (EU) No with respec

render cansumed und

n patent wite condition of whethes a recipien

rrender, noof claims as

via online

rest for themade publde world vintry in the rment of antent propriethe EPO athe purposernational

d by the prcencing coitary pateny mutatis m

tent with u

stration in prietor of a ent with unurrender w1257, the E

ct to all the

nnot and wder Article th unitary e

ns, effects aer a partial nt of the de

o new specs filed by thfile inspec

e holder of ic not onlyia the publregister of n administretor (see R

as to whichse of registstandardis

roprietor ofommitmentt protectio

mutandis.

unitary eff

the RegistEuropean

nitary effecwill be regisEuropean participati

ill not be v7 Regulat

effect as aand date osurrender eclaration

cification whe patent pction.

a standardy within theication in ta licensing

rative fee aRule 16(1)(h precise intering a licsation bodi

f the Europt, this licenn as descr

fect (Rule

ter for unitapatent wit

ct. More pastered. In apatent withng membe

erified by ttion (EU) Nn object of

of effect of is possibleof surrend

will be publiproprietor w

d essentiale standard the Registeg commitmand takes p(k)). Additionformation ensing comes.

pean patennce can beribed abov

16(1)(n)

ary patent th unitary earticularly, taccordanceh unitary eer states.

the EPO. ANo 1257/20f property, a surrendee. Accordiner, be it a

ished by thwould be m

58/84

l patent to

er for ment is place only onal is to be

mmitment

nt with e under

protection effect that the date e with ffect can

As 012 which

national er , ngly, the complete

he EPO. made

4

SC/10/14 e 59/84 141320004

SC/10/14141320004

VI. D

Fo21.eqenunthP

In22.impathtoam

Th23.toindeliglim

e

elegation

or the sakequivalent tontries additnitary patehe entries rresident of

n the interemprove andart, i.e. thehe evolvingo ask the Smend the R

his is also o add entrienstance to aespatch of ght after thmitation or

clause fo

e of efficieno Rule 143tional to th

ent protectioreferred to f the EPO.

est of goodd upgrade e Register fg needs of Select ComRules relat

the ratio oes to the Eadd via a df a suppleme Europearevocation

or addition

ncy, a para3(2) EPC ahose referron (see alsin paragra

patent infothe Europefor unitary its users. I

mmittee for ting to unit

of Rule 143European Pdecision somentary Euan search rn of the Eu

nal Registe

agraph 2 isallowing thered to in paso Article 1aph 1 may

ormation pean Patenpatent proIt would moeach and ary patent

3(2) EPC wPatent Regome proceuropean sereport was uropean pa

er entries

s proposede Presidenaragraph 116(1)(b) CPnot be am

policy, thert Register

otection, sooreover beevery minoprotection

which givesgister. The dural occu

earch repordrawn up,

atent.

d which laynt of the EP1 be made PC 1989).ended nor

e is a needincluding i

o as to adae burdensoor additionn.

s the PresidPresident

urrences surt, new doc, or the dat

ys down a PO to decidin the RegThis implie

r deleted b

d to constats future s

apt the Regome and inal Registe

dent the podecided fo

uch as the cuments cote of a req

60/84

provision de that gister for es that y the

antly pecial gister to nefficient r entry to

ossibility or date of oming to uest for

4

SC/10/14 141320004

CHAPTER

Rule 17

(1) ThspRP

(2) Th

paCin

e

PR II

EP

he Europepecial part

Rules, the Catent Offic

he Official art, noticesommittee o

nformation

PUBLICAT

European Patent Offi

ean Patent , the partic

Chairpersoce.

Journal res and inforor by the Prelevant to

TIONS

Patent Buice

Bulletin reculars the pn of the Se

eferred to inmation of a

President oo the imple

ulletin and

eferred to inpublicationelect Comm

n Article 12a general cof the Euroementation

Official J

n Article 12 of which imittee or th

29(b) EPCcharacter i

opean Pateof unitary

ournal of

29(a) EPC s prescribehe Preside

shall contssued by t

ent Office, apatent pro

the Europ

shall conted by the p

ent of the E

tain, as a sthe Select as well as otection.

61/84

pean

tain, as a present

European

special

any other

4

SC/10/14141320004

Rule 17 –

A1.PathC

O2.ruthprwpach

S3.pede

e

– Europea

rticle 129(aatent Bulle

he EPC, theommittee o

Obviously, nules. Thus,hat referencresent rule

well as dataatent protehapter for u

ince the Seertaining toedicated ch

n Patent B

a) EPC proetin containe Implemeor the Pres

no referenc a special ce and the

es in the Eua laid downection and unitary pat

elect Como unitary pahapter of t

Bulletin an

ovides thatning the paenting Regusident of th

ce is preseprovision a

ereby ensuuropean Pan in Rule 14for file insptent entries

mittee andatent protehe EPO's O

nd Official

t the EPO warticulars thulations to he EPO.

ently madeappears nere publicatatent Bulle43 EPC). Apection, it ws in the Eu

d the Presidection the rOfficial Jou

l Journal o

will periodhe publicat the EPC,

e in Article ecessary wtion of all p

etin (which As is the cawould makropean Pa

dent of therelevant teurnal.

of the EPO

ically publition of whicthe Chairp

129(a) EPwhich woulparticulars contains b

ase for theke sense toatent Bullet

e EPO will txts will be

O

ish a Europch is prescperson of th

C to the prd expresslset out in t

bibliographe Register fo have a detin.

take decispublished

62/84

pean cribed by he Select

resent ly make the

hic data as for unitary edicated

ions in a

4

SC/10/14 e 63/84 141320004

Rule 18 Publication of translations

The President of the European Patent Office shall determine the form of the publication of the translations referred to in Rule 6, paragraph 2(d), and the data to be included.

SC/10/14141320004

Rule 18 –

O1.aptoA

U2.Rmrefobe

It 3.Pelpabe

e

– Publicati

Over a transpplication oo be submitrticle 6 of s

nder ArticlRegulation (meaning of eferred to inor unitary ee for inform

is proposeresident ofectronic puart of the fie inspected

ion of tran

sitional perof Regulattted togethsaid regula

e 6(2) Reg(EU) No 12Article 143n paragrap

effect is filemation purp

ed that the f the EPO ublication. ile relating d online by

nslations

riod of a mion (EU) Nher with traation.

gulation (E257/2012, 3 EPC, givph 1 as sooed. The texposes only

translationwill be emThis may to the Eur

y the public

maximum ofNo 1260/20anslations o

U) No 126the particie the EPOon as poss

xt of such try.

ns should bpowered toconsist of

ropean patc.

f 12 years 012, a requof the spec

60/2012, inpating mem

O the task osible after translations

be publisheo select anincluding t

tent with un

starting frouest for unicification in

accordancmber stateof publishinthe date ons will have

ed in electn appropriathe translanitary effec

om the dattary effect

n accordan

ce with Artes will, withng the trann which a rno legal va

tronic formate form foations in thect, where th

64/84

te of will have

nce with

ticle 9 hin the slations request alue and

. The r such e public hey can

4

SC/10/14 e 65/84 141320004

Rule 19 Inclusion of decisions of the Unified Patent Court in the files

Where the Unified Patent Court, in a final decision, revokes a patent, either entirely or partly, the European Patent Office shall include the copy of the decision forwarded to it by the Court in the files relating to the European patent with unitary effect where it shall be open to file inspection. The EPO shall include a copy of any decision of the Unified Patent Court forwarded to it by the Court and relating to European patents with unitary effect, including those decisions referred to in Rule 1, in the files relating to the European patent with unitary effect, where it shall be open to inspection.

SC/10/14141320004

Rule 19 –

In1.inw

R2.dedebrBathR

Fo3.wit paThunE

N4.EEC

Ac5.inofpa

Th6.thtoE

e

– Inclusion

n order to inncluded in twill be open

Rule 19 is wecision relaecisions rerought undased on th

he EPO in aRules of pro

or instancewhere the C

will send aatent, to thhe EPO winitary effecuropean p

o separateuropean puropean pourt (see A

ccording ton a final decf the decisiatent office

he EPO wihe files relao file inspecuropean p

n of decisi

nform the pthe files re

n to file insp

worded as aating to the

eferred to inder in Articlhis framewoaccordancocedure of

e, Article 6Court, in a fa copy of thhe national ill include sct and will atent with

e specificatatent. Howatent with Article 65 A

o Article 65cision, hasion to the Ee of any co

ill then inclating to thection. The atent with

ions of the

public, declating to thpection.

a blanket ce Europeann Rule 1 (ile 32, paraork, any de

ce with the the Unified

5(5) Agreefinal decisihe decisionpatent offi

said copy iin particulaunitary eff

tion will bewever, it is unitary eff

Agreement

5(5) Agrees revoked aEPO and, w

ontracting m

lude said ce EuropeanEPO will nunitary eff

e Unified

cisions takehe Europea

clause andn patent w.e. decisio

agraph 1(i)ecision of tAgreemend Patent C

ement on aion, has ren to the EPice of any in the files ar not publfect is revo

e issued whnecessary

fect is fully t on a Unif

ment on a a patent, ewith respemember st

copy of then patent winot publish fect is revo

Patent Co

en by the Uan patent w

d allows incwith unitary

ns handed, Agreemethe Court cnt on a UniCourt.

a Unified Pevoked a paPO and, wicontractingrelating toish a new

oked partly.

here unitary to inform or partly reied Patent

Unified Paeither entireect to a Eurate concer

e decision fth unitary ea new spe

oked partly.

ourt in the

Unified Patwith unitary

clusion in teffect, inc

d down by tent on a Uncan be inclfied Paten

Patent Couratent, eitheth respect g member

o the Europspecificatio.

ry effect is the public evoked by Court

atent Courely or partlyropean patrned.

forwarded effect wheecification .

files

tent Court y effect, wh

the files of luding thosthe Court i

nified Patenluded in th

nt Court an

rt sets out er entirely to a Europstate conc

pean patenon where t

attributed in case ththe Unifie

rt, where thy, it will setent, to the

to it by there it shall bwhere the

66/84

should be here they

any se in actions nt Court). e files of d the

that, or partly, pean cerned. nt with the

to a e d Patent

he Court, nd a copy

e national

e Court in be open

4

SC/10/14 e 67/54 141320004

PART IV COMMON PROVISIONS

Rule 20 Common provisions governing procedure

(1) The following provisions of the EPC, as amended, shall apply mutatis mutandis: Article 14, paragraphs 1, 3 and 7; Article 113, paragraph 1; Articles 114, Articles 117, 119, 120, 125; Article 128, paragraph 4; Articles 131, 133; Article 134, paragraphs 1, 5 and 8 .

(2) The following provisions of the Implementing Regulations to the EPC, as amended, shall apply mutatis mutandis:

(a) Rules 1 and 2; unless otherwise provided Rule 3, paragraph 1, first sentence; Rule

3, paragraph 3; Rules 4 and 5; (b) Rules 22 to 24; (c) Rule 41, paragraph 2(c) and (d); (c) Rule 50, paragraphs 2 and 3; (d) Rule 111, paragraph 1; Rule 112 and 113; (e) Rules 115; Rule 116, paragraph1; Rule 117 to 124; (f) Rules 125 to 130; (g) Rule 131; Rule 133, paragraph 1, subject to the proviso that the document referred

to in that provision has been received no later than one month after expiry of the period; Rule 134;

(h) Rule 139, first sentence and Rule 140; (i) Rule 142; (j) Rules 144 to 147; (k) Rules 148 to 150 ; (l) Rules 151 to 153. (3) When applying the provisions referred to in paragraphs 1 and 2 mutatis mutandis,

the term “Contracting States” shall be understood as meaning the Contracting States to the EPC, except for Article 125 EPC where it shall be understood as meaning the participating Member States.(3)

SC/10/14141320004

Rule 20 – I. G

R1.wcaclEthRcoRasen(s

Th2.prreacreAdaune

O3.topaaire

e

– Common

General

Regulation (within the married out iarity and dPC are of

he proceduRegulationsorresponds

Regulationsspects of thnumeratedsee for exa

he legislatirovisions aelated praccquainted weference endministratiutomaticallecessitatin

Only in exceo the needsarticular thm of the R

equesting u

n provisio

(EU) No 12meaning of

n accordadefinitenesrelevance

ural rules os) that appls to the legs to the CPhe tasks e

d in Rule 20ample Rule

ive techniqallows autoctice. It thewith the clansures thave Councily be applic

ng an adop

eptional cas of the proe case for

Regulation unitary effe

ns govern

257/2012 sArticle 143nce with ths, i.e. legain the presf the EPC y for the p

gislative tecPC 1989). A

ntrusted to0 and thos

e 13(6) refe

que chosenomatic and reby providassical EP

at whenevel so as to icable for th

ption by the

ases have socedures rall the timwhich is to

ect reasona

ning proce

sets out tha3 EPC, givhe "internaal certainty,sent contex(both fromurpose of chnique usAs a resulto the EPO se referred erring to Ru

n, i.e. a dynfull alignm

des legal cPO proceduer EPC promprove thhe purposee Select Co

some EPCrelating to ue limits wh

o keep the ably short f

edure

at the parte the EPOl rules" of t, and sincext, it is pro

m the Convethe presensed in Rule, with respunder Rulto in some

ule 51(4) a

namic refement to the certainty anures. In ter

ocedural rue EPO proe of the preommittee.

C-provisionunitary pathich have boverall dufor the sak

icipating mO some add

the EPO. Fe not all proposed thatention andnt rules be e 31 Implemect to the pe 1, only the other of tand (5) EPC

erence to thcurrent EP

nd clarity forms of legisles are bei

ocedures, tesent Rule

s been rewtent protecbeen kept sration of th

ke of legal

member staditional tasFor the sakocedural rut a exhaus

d the Impleprovided (menting purely proche EPC-prthe presenC) will app

he relevanPO procedor the userslation, theing amendthese chanes without

worded andction. This ishort in linhe proceducertainty.

68/54

ates will, sks, to be ke of ules of the stive list of ementing (this

cedural rovisions t Rules

ply.

t EPC-dures and rs e dynamic ded by the nges will

d adapted is in e with the

ure for

4

SC/10/14 e 69/84 141320004

(4) Where the present Rules, including the provisions of the EPC applicable mutatis mutandis under the present Rules, refer to "a period to be specified", this period shall be specified by the European Patent Office. Unless otherwise provided, a period specified by the European Patent Office shall be neither less than one month nor more than four months.

SC/10/14141320004

Th4.porefilexprapAgavce

It 5.tounEAcAco

II. La

A6.EasinanofRfir

As7.Efoprw

e

he applicaowers to thespect to the to be excxcluding dorejudicial topply since gain, the ovoid paralleertainty an

is to be noo in paragranderstood PC where ccordinglyrticle 134, ontracting

anguage R

rticle 14(1)PC definess laid down

n the langund Rule 6 (fficial langu

Rule 3(1) EPrst sentenc

s a conseqPO, any pa

or unitary eractice, use

which will in

bility of sohe Presidehe implemecluded fromocuments o personalit was take

objective isel procedud simplicity

oted that, paphs 1 andas meaninit shall be , the term paragraphstates to th

Regime

) EPC detes the term n in Rule 2age of pro(2)). This duages mayPC). It is thce, EPC (a

quence, asarty may u

effect itself,ers will com

nter alia co

me EPC-pnt of the Eentation ofm file inspefrom inspe or econom

en under ths to have a ures and hiy for the us

pursuant tod 2 mutatisng the Conunderstoo“contractin

hs 1, 5 andhe EPC.

ermines the"language

20(1). Howceedings (

deviates froy be used aherefore pras well as R

s regards thuse any off, which hasmplete a dntain the re

provisions wEPO for impf Rule 144(ection”, theection if themic intereshe relevanfull alignmgher costssers acqua

o Rule 20(3s mutandisntracting Stod as meanng states” rd 8 EPC, R

e official lae of proceeever, the r(see Articleom the EPas a matteroposed thRule 3(3) E

he languagficial languas to be filededicated foequest in t

will sometiplementing(d) EPC we Presideneir inspectists. This det EPC rule

ment to the s arising thainted with

3), when as, the term tates to thening the pareferred to

Rules 148 to

anguages oedings". Borequest for e 9(1)(g) R

PC regime, er of principhat unless oEPC) shou

ge in writteage of the d in the lanorm when the three o

mes imply g this rule. hich deals t of the EPon would f

ecision woue applying m

EPO procerefrom an the EPO p

pplying the“Contractin

e EPC, excarticipating

in Articleso 150 EPC

of the EPOoth provisio

unitary effRegulation

where anyple in writteotherwise ld apply m

en proceedEPO exce

nguage of requesting

official lang

a delegatiFor exampwith “Part

PO took a dfor exampluld for instmutatis mu

cedure in ond to obtaiprocedures

e provisionng States”cept for Art Member S

s 119, 131,C, means th

O, and Articons are appfect has to(EU) No 12y of the thren proceedprovided, Rutatis muta

dings beforept for the proceeding

g unitary efuages of t

70/84

ion of ple, with ts of the decision e be tance also utandis. order to n legal s.

ns referred shall be ticle 125 States. 133 and he

cle 14(3) plicable be filed 257/2012 ree EPO dings (see Rule 3(1), andis.

re the request gs. In ffect he EPO.

4

SC/10/14 e 71/84 141320004

SC/10/14141320004

In8.efadarRretraErere

III. Fi

D9.anopinre

Fo10.mEmm

As11.th

IV. R

It 12.Runprexanth

e

n order to affect, the Edmissible nre not appl

Rule 6(2) EPe-establishanslation wPC). In pra

equests forectify a def

ile inspect

ocuments ny documepen to pub

n the existinesulting Eu

or that purmutandis to

uropean pmodalities amutatis mut

s regards that Rule 14

Representa

is proposeRules 151 tonaltered EProfessionaxplained unnd 134 EPhe 25 mem

avoid delayEPC provisnon-EPO lalicable (ArtPC). As a ment of rigwithin a moactice, howr re-establificiency wit

tion and c

relating toent relatingblic file inspng electronuropean pa

pose, it is Europeanatent with

and restricttandis.

the constit47 EPC sho

ation

ed that Artio 153 EPCPO regimel representnder point

PC is to be mber states

ys in the stions allowianguage pticle 14(4) result, it wghts in an aonth. This iwever, this shment of thin a certa

constitutio

o the proceg to the Eupection. It inic file relaatent.

proposed tn patents wunitary eff

tions laid d

tution, mainould apply

cles 133 aC apply mue applies, etatives whi5 above, tunderstoo participati

traightforwaing documprovided thEPC; Ruleill for instaadmissibleis in contrapossibility rights or re

ain period.

on, mainte

dure for thropean pas thereforeting to the

that Articlewith unitaryfect could bdown in Ru

ntenance ay mutatis m

and 134 pautatis mutaexcept for sich are notthe term “Cd as meaning to enha

ard procedents to be

hat a transle 3(1), seconce not be

e non-EPO ast to the pis almost

eplying to

enance an

he registrattent with ue proposedEuropean

e 128(4) EPy effect. Asbe inspecteles 144 to

and presermutandis.

aragraphs 1ndis. In othsome provt relevant iContractingning the EPanced coop

dure for reqfiled withination is fileond senten

e possible tlanguage

proceedingnever usedan invitatio

d preserv

tion of unitaunitary effed that a spe patent ap

PC should s a result, ted on requ146 EPC,

rvation of fi

1, 5 and 8 her words, visions on tn the preseg State” usPC Contracperation (s

questing un a time limed within ance, EPC; to file a reqand to file

gs governed when it con from the

vation of fi

ary effect act will haveecial part b

pplication a

apply mutthe files re

uest, subjecwhich also

iles, it is pr

EPC, as walmost the

the list of ent contex

sed in Articcting Statesee Rule 20

72/84

nitary mit in an month and quest for a d by the

comes to e EPO to

iles

as well as e to be be createdand the

tatis elating to a ct to the o apply

roposed

well as e entire,

xt. As cles 133 es and not 0(3))

4

SC/10/14 e 73/84 141320004

SC/10/14141320004

Th13.ispua hareprof

V. O

Pa14.(nThex

As15.mduRprmthprrefro

Fu16.wlathmef

e

his means not subjecurpose of fEuropean ave its placepresentedroceedingsf filing of th

Oral procee

art VII, Chnotificationshe fundamxplanations

s regards tmutandis. Furation of t

Regulation (roposed: R

minimum pehe procedurocedure inequirementom the req

urthermorewith the provater than onhe one-monmain documffect and th

that for exct to compfiling a reqpatent wit

ce of busind by a profes regardinghe request

edings an

apters III (s) of the Im

mental rights there.

the calculaor the purpthe proced(EU) No 12

Rule 20(4) eriod to oneure for requnsofar as itts. It does quester wh

e, the conteviso that thne month anth period

ments to behe translat

xample a Sulsory repruest for unth unitary eness in an essional reg the Europfor unitary

d taking o

oral procemplementint to oral pro

ation of perpose of legure for req257/2012, takes overe month inuesting unit exclusivein particulaich would j

ent of Rulehe documeafter expiryfor filing th

e filed with ions.

Spanish firmresentationnitary effeceffect. WheEPC Cont

epresentatipean pateny effect.

of evidenc

edings andng Regulatoceedings

riods time gal certaintquesting unsome mod

r the substnstead of twtary effect

ely relates tar not requjustify long

e 133(1) Eent referredy of the relehe request the EPO w

m having itn by a prof

ct and all there a legal racting Staive and actnt with unit

ce, notifica

d taking of tions to theis provided

limits, Rulety, and in onitary effecdifications tance of Ruwo. The resignificantto the fulfil

uire the preger periods

PC is set od to thereinevant periofor unitary

will in fact b

ts place of fessional rehe other pr

person doate, it will nt through htary effect,

ations, tim

evidence)e EPC appd for in Ru

e 131 EPCorder to kect reasonabto the perioule 132 EPason for thtly differs fment of pu

eparation os.

out separatn must havod. This is y effect, givbe the requ

f business epresentatocedures r

oes howeveneed to be him in all including

me limits

) and IV ly mutatis

ule 21, see

C applies mep the ovebly short, iods of the

PC but shohis shortenfrom the paurely formaof substant

tely in Ruleve been recto be in lin

ven the facuest for un

74/84

in Spain tive for theregarding er not

for the act

mutandis. the

mutatis erall n line with EPC are rtens the

ning is that atent grantal tive replies

e 20(1)(g) ceived no ne with ct that the nitary

4

t

t

SC/10/14 e 75/84 141320004

Rule 21 Oral proceedings

(1) Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings. However, the European Patent Office may reject a request for further oral proceedings where the parties and the subject of the proceedings are the same.

(2) Nevertheless, oral proceedings shall take place before the Unitary Patent

Protection Division at the request of the proprietor of the European patent in the procedure concerning the request for unitary effect only where the Unitary Patent Protection Division considers this to be expedient.

(3) Oral proceedings before the Unitary Patent Protection Division shall not be public.

SC/10/14141320004

Rule 21 –

In1.orthexPait

H2.unprfounPacaispr

Th3.pothastommruefsuprfoan

O4.rewbypa

e

– Oral proc

n accordanral proceedhe instancexpedient oatent Protewhere the

owever, innder whichroceedingsor unitary enitary effecatent Proteases wheresues relevroceedings

he proceduossible for he proprietos a rule coo duly prepmonths’ notmutatis mutule, make affect, This wummons toroceedingsormal defecnd simple i

Oral proceee-establish

with regard y this restraragraph 1

ceedings

ce with Artdings, parae of the Unr at the reqection Divisparties an

n the intereh oral proces should beeffect. Thusct will normection Divise face-to-favant to the s to be exp

ure for regreasons o

or where thnsiderably

pare oral price of the sandis (seean auxiliarywould also

o be issueds would mocts can usuin the majo

edings withment of rigto the timeiction and

1.

ticle 116(1agraph 1 pitary Patenquest of ansion may r

nd the subj

est of proceeedings are expresslys, oral proc

mally be exsion considace dialogregistratio

pedient.

istering unof legal certhe EPO inty delay the roceedingssummons e Rule 20(2y request fo be very cd, translatiooreover noually not beority of cas

respect toghts with ree limit for fiare to be h

) EPC whirovides thant Protectiony party to reject a reqect of the

edural econre to be hey restrictedceedings inxcluded andders this toue is likelyn of unitary

nitary effectainty. Holdtends to rewhole pro

s (proprietoaccording 2)(e)). Sincfor oral procost-intensions to be p

ot producee removedses (see R

o other proegard to thling the reqheld on req

ch enshrinat oral procon Divisionthe procee

quest for fuproceeding

nomy, it is eld upon red in proceen proceedid should tao be expedy to result iy effect wil

t should beding oral p

efuse the reoceedings bor to be suto Rule 11

ce patenteeoceedings wive (commprovided, many furthe

d and the leules 5 and

cedures, se time limiquest for uquest in ac

nes the funceedings tn if it considedings. Hourther oral gs are the

proposed quest of an

edings conngs conceake place odient. Only n a speedill the EPO

e kept as eproceedingequest for because thmmoned w5(1) EPC

es would pwhen requunication a

minutes to r clarity, beegal situati 6).

such as thet for payin

unitary effeccordance

ndamental ake place ders this to

owever, theproceedingsame.

that the prny party tocerning the

erning the ronly if the Uin excepti

ier resolutideem ora

expeditiouss at the reunitary eff

he EPO wowith at leaswhich app

presumablyuesting unitaccompanbe taken).

ecause theion will be

e procedurg renewal

ect, are unawith propo

76/84

right to either at

o be e Unitary gs before

rinciple o the e request request forUnified onal on of the l

s as quest of fect would ould need st two plies y, as a tary ying the . Oral e possible clear cut

re for fees or

affected osed

4

r

SC/10/14 e 77/84 141320004

Rule 22 Re-establishment of rights

(1) A proprietor of a European patent or of a European patent with unitary effect who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing the European patent with unitary effect to lapse according to Rule 14, paragraph 1(b), or the loss of any other right or means of redress.

(2) Any request for re-establishment of rights under paragraph 1 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. However, a request for re-establishment of rights in respect of the period specified in Rule 6, paragraph 1, shall be filed within two months of expiry of that period. The request for re-establishment of rights shall not be deemed to have been filed until the prescribed fee has been paid.

(3) The request shall state the grounds on which it is based and shall set out the facts

on which it relies. The omitted act shall be completed within the relevant period for filing the request according to paragraph 2.

(4) The European Patent Office shall grant the request, provided that the conditions

laid down in the present Rule are met. Otherwise, it shall reject the request. (5) If the request is granted, the legal consequences of the failure to observe the time

limit shall be deemed not to have ensued. (6) Re-establishment of rights shall be ruled out in respect of the time limit for

requesting re-establishment of rights and in respect of the period referred to in Rule 7, paragraph 3.

(7) Any person who, in one or several participating Member States, has in good faith

used or made effective and serious preparations for using an invention which is the subject of a European patent with unitary effect in the period between the loss of rights referred to in paragraph 1 and publication in the Register for unitary patent protection of the mention of re-establishment of those rights, may without payment continue such use in the course of his business or for the needs thereof in the participating Member States.

SC/10/14141320004

Rule 22 –

It 1.reinedgowha

A 2.rethsarespfoomw

Th3.thRduclthlereco

Fo4.from

e

– Re-estab

is proposeedress for ancluding theditorial conoverning re

would be unas been fo

typical casenewal feehe proprietoaid requeste-establishpecified in or re-establmitted act,

within this tw

he special he fact thatRegulation (uration for arification

he patenteeegal regimee-establishonjunction

or the samom re-esta

month perio

blishment

ed that re-eall the proce procedurnstraints, ae-establishnclear and ormulated.

se giving rs in time foor of the Et too late, iment of rigRule 6(1).lishment si.e. the fili

wo-month

period of tt the proce(EU) No 12reasons oof the legae can eithee via nationment of rigwith Rule

me reason, ablishmentod for rectif

of rights

establishmcedures rere for requ

a cross refehment of rigtoo difficul

rise to re-eor the Eurouropean pit is proposghts in resp It is furthehould be fing of the rperiod.

two monthdure for re257/2012,

of legal certal situationer opt for anal validatights in the 136 EPC))

- i.e. keept of rights thfying forma

ment of righlating to thesting unit

erence to thghts and itlt to read. T

stablishmeopean pateatent omit

sed that hepect of the ermore proiled within request for

s instead oequesting uan expedittainty. The in the stat Europeanons (see apriority pe).

ing the prohe period ral deficienc

ts as the ohe Europeatary effect, he numeros interactioTherefore,

ent of rightsent with un

to file a ree should be

non-extenoposed thattwo monthunitary eff

of the usuaunitary effetious proce

e prevailingte of uncer

n patent witalso the spriod under

ocedure shreferred tocies in the

only applicaan patent wshould be

ous differenon with furt a new all-

s will be thitary effect

equest for ue able to ondable onet in such a

hs of expiryfect, must

al one-yearect should edure with g interest isrtainty folloth unitary eecial perio

r Article 87

hort - it is p in Rule 7(request fo

able meanwith unitarye introducent EPC prother proces-inclusive p

he failure tot. In additiounitary effebtain

e-month pea case, the y of that pealso be co

r-period is be, in line a short ov

s thereforeowing graneffect or a

od provided(1) EPC in

proposed to(3) (i.e. ther unitary ef

78/84

s of legal y effect, d. Due to

ovisions ssing provision

o pay on, should ect or file

eriod request

eriod. The ompleted

due to with

verall e an early t where different

d for the n

o exclude e one ffect).

4

SC/10/14 e 79/84 141320004

Rule 23 Form of decisions

Decisions of the European Patent Office against which actions can be brought before the Unified Patent Court in accordance with Article 32, paragraph 1(i), Agreement on a Unified Patent Court shall be reasoned and shall be accompanied by a communication pointing out the possibility of bringing an action before the Unified Patent Court. The parties may not invoke the omission of the communication.

SC/10/14141320004

Rule 23 –

P1.viU

e

– Form of d

roposed Rew of the fnified Pate

decisions

Rule 23 repfact that acent Court.

s

produces Rctions agai

Rule 111(2)inst EPO d

) EPC withdecisions a

h some adaare to be br

aptations rerought befo

80/84

equired in ore the

4

SC/10/14 e 81/84 141320004

Rule 24 Interlocutory revision

(1) If the European Patent Office is informed by the Unified Patent Court that an application to annul or alter a decision of the European Patent Office is admissible and if the European Patent Office considers that the application is well founded, it shall within two months of the date of receipt of the application

(a) rectify the contested decision in accordance with the order or remedy sought by

the claimant and

(b) inform the Unified Patent Court that the decision has been rectified.

SC/10/14141320004

Rule 24 –

P1.wof

Ac2.APathto

Th3.defoUth

P4.onRsycuredr

S5.inPareesinlikle(sguU

e

– Interlocu

roposed Rwith Rule 91f 31 Janua

ctions conrticle 9 Reatent Cour

he decisiono annul or a

he UPC theficienciesorward it toPC, the EP

he conteste

roposed Rne month f

RoP is quiteystem, the urrent EPOeasons, theraft RoP U

ince actionn Article 9 Ratent Cour

evision mecstablish, in

nternal Guidkely to be iegal questiosee Rule 4(uarantee thPC are leg

utory revis

Rule 24 is la1 of the draary 2014, h

cerning degulation (Ert (see Articn of the EPalter a dec

en makes s where apo the EPO uPO has oned decision

Rule 24 mirfor both thee short. If inEPO need

O practice, e present pPC.

ns concernRegulationrt and not bchanism w

n the framedelines) wssued (e.gons, a lega(3)) is invohat EPO dgally sound

sion

argely modaft Rules oereinafter

ecisions of EU) No 125cle 32(1)(i)

PO (see Rucision of the

an admissplicable). Iunder Rulee month fr

n and to inf

rrors this pre rectificatinterlocutords more timthe period

proposal de

ning decisio (EU) No 1before the

without a poework of thhich will eng. rejectionally qualifieolved beforecisions a

d.

delled on Aof procedurreferred to

the EPO i57/2012 ar) UPC Agr

ule 88 drafte Office").

sibility checf the applice 90 draft Rrom the daform the C

rocedure. ion and infry revision me, i.e. a md is three meviates fro

ons of the 1257/2012 EPO, whic

ossible inve implemensure that

n of a requeed memberre the issuagainst whic

Article 109 re of the Uo as draft R

n carrying re to be broeement) wt RoP UPC

ck (and thecation is adRoP UPC. ate of receiCourt that th

However, formation ois to be an

minimum omonths, seeom the prop

EPO in caare to be

ch could haolvement o

entation, anin cases west) or wher of the Unance of thech an actio

EPC and gnified Pate

RoP UPC))

out the tasought befo

within two mC which gov

e applicantdmissible, Under Rupt of the aphe decision

it is noted of the Courn efficient af two monte Art. 109 posal made

rrying out tbrought beave alloweof the UPCn EPO intewhere an aere the casnitary patene decision.on can be b

goes handent Court ().

sks referreore the Unifmonths of sverns “App

t can correthe UPC wle 91 draft pplication tn has been

that the pert providedand workabths (under EPC). Fore with resp

the tasks refore the Ued a post-dC, it is propernal procedverse dec

se involvesnt protectio This woulbrought be

82/84

d in hand 16th draft

ed to in fied service of plications

ect will RoP to rectify n rectified.

eriod of d in UPC ble the

r this pect to the

referred to Unified decision posed to edure (e.g. cision is s complex on Divisiond

efore the

4

SC/10/14 e 83/84 141320004

PART V FINANCIAL ISSUES

Rule 25 Cover for expenditure incurred by the European Patent Office1

(1) The costs incurred by the European Patent Office in carrying out the tasks entrusted to it in accordance with Article 9, paragraph 1, Regulation (EU) No 1257/2012 have to be borne by the participating Member States pursuant to Article 146 EPC and have to be covered by the renewal fees generated by the European patent with unitary effect pursuant to Article 10 Regulation (EU) No 1257/2012.

(2) In case the application of paragraph 1 does not lead to a balance of income and

expenditure, the relevant provisions of the EPC shall apply. (3) The implementation of paragraphs 1 and 2 shall ensure cost neutral performance

of the tasks entrusted to the EPO. It shall be governed by the EPO’s Financial Regulations.

1 To be discussed in the context of the financial issues.

SC/10/14141320004

Rule 25 –

Ac1.Eim

Pa2.th

e

– Cover fo

ccording touropean p

mplemente

aragraph 2he initial ph

r expendit

o Article 14atent with d in a way

2 is intendehase.

ture incur

46 EPC anunitary eff

y that ensur

ed to deal

rred by the

nd Article 1fect has to res budget

in particula

e Europea

0 ff Regulabe self-fint neutrality

ar with the

an Patent O

ation (EU) ancing and

y.

situation w

Office

No 1257/2d has to be

which migh

84/84

2012 the e

ht occur in

4