SC/10/14 e

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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 III
AND 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 III
SPECIAL 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--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 (16
th
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 Office
1

(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 EPOs Financial
Regulations.









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

SC/10/14 e 83/83
141320004
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.


SC/10/14 e 1/84
141320004
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
PART I
CHAPTER
Rule 1
(1) Th
th
ca
an
ac
C

(2) In
in
pr

e
IN
S R I
S
he particip
he tasks ref
arrying out
nd shall be
ctions brou
ourt.
n case of co
ncluding Re
rovisions o
NSTITUTIO
SUBJECT
Subject ma
pating Mem
ferred to in
t these task
e bound by
ught under
onflict betw
egulation (
of Union law
ONAL PRO
MATTER
atter
mber States
n Article 9,
ks, the Eur
y decisions
r Article 32
ween the p
EU) No 12
w shall pre
OVISIONS
s hereby e
paragraph
ropean Pa
s handed d
, paragrap
provisions o
257/2012 a
evail.
S
ntrust the
h 1, Regula
tent Office
own by the
ph 1(i), Agr
of the pres
and Regula
European
ation (EU)
e shall appl
e Unified P
eement on
sent Rules
ation (EU)
Patent Off
No 1257/2
ly the pres
Patent Cou
n a Unified
and Union
No 1260/2
3/84
fice with
2012. In
ent Rules
urt in
Patent
n law,
2012, the
4

SC/10/14
141320004
Rule 1 S

A 1.
sp
ch
pr
A
th
ac
Ag
Th 2.
th
E
se
In
of
ta
N
P
Pa 3.
(E
E
U
a
P 4.
gu
N
pr
pr
tw
pr
re
e
Subject m
rticle 142(1
pecial agre
haracter th
rovides tha
rticle 142(1
hat a Europ
ccordance
greements
he group o
he Europea
PC). Spec
et up within
n accordan
f the prese
asks entrus
o 1260/20
rotection",
aragraph 1
EU) No 125
PO, in carr
nified Pate
Unified Pa
roposed R
uarantees
o 1257/20
resent rule
rovisions a
wo regulatio
rovide an a
esolve the
matter
1) EPC stip
eement tha
hroughout t
at the regu
1) EPC. Fu
pean paten
with Articl
s, apply.
of contracti
an Patent O
cial departm
n the EPO
ce with the
ent rules, w
sted to the
12. These
as reflecte
1 of Rule 1
57/2012 ar
rying out th
ent Court (
atent Court
Rule 1(2) co
that Union
12 and No
es. Where a
and princip
ons, that in
alternative
conflict.
pulates tha
at a Europe
their territo
lation cons
urthermore
nt with unit
e 142(2) E
ng states w
Office (her
ments com
to carry ou
ese princip
which is to l
EPO unde
rules are r
ed in the tit
holds that
re entruste
hese tasks
UPC) in ac
t.
ontains a c
n law, inclu
o 1260/201
an interpre
les of eithe
nterpretatio
one that c
at any grou
ean patent
ories. Articl
stitutes a s
e, Article 3(
ary effect h
EPC, the pr
within the
einafter "E
mmon to the
ut these ad
ples, propo
lay down th
er Regulati
referred to
tle.
t the additi
ed to the EP
s, will be bo
ctions brou
conflict rule
uding the p
2 take pre
etation of th
er of the tw
on cannot
complies w
up of contra
granted fo
e 1 Regula
special agr
(2) Regula
has a unita
rovisions o
meaning o
EPO") addit
e contractin
dditional ta
osed Rule 1
he provisio
ions (EU) N
o as the "Ru
ional tasks
PO by virtu
ound by de
ught under
e modelled
rovisions o
ecedence o
he present
wo regulatio
be followe
with Union l
acting stat
or those sta
ation (EU)
eement wi
ation (EU) N
ary charact
of Part IX E
of Article 14
tional tasks
ng states i
asks (see A
1(1) define
ons require
No 1257/2
ules relatin
s as provid
ue of the p
ecisions ha
Article 32(
on Article
of Regulati
over the pro
t provisions
onsUnion l
d and the
aw the reg
tes may pro
ates has a
No 1257/2
thin the me
No 1257/20
ter. Theref
EPC, Spec
42(1) EPC
s (see Arti
n the grou
Article 143(
es the subje
ed to imple
012 and (E
ng to Unita
ed for in R
present rule
anded dow
(1)(i) Agree
164(2) EP
ons (EU)
ovisions of
s runs cou
law, includ
EPO will h
gulations in
4/84
ovide by a
a unitary
2012
eaning of
012 holds
fore, in
cial
may give
cle 143(1)
p may be
(2) EPC).
ect matter
ement the
EU)
ary Patent
Regulation
es. The
wn by the
ement on
PC. It
f the
nter to
ding the
have to
n order to
4


SC/10/14
141320004
CHAPTER
Rule 2
(1) Th
an

(a) th

(b) th

(c) ot

(d) its

(2) [T
su
N

(2) Th
ac
ac
e
S R II
C
he Select C
nd amend
he present
he Rules re
ther rules o
s Rules of
The Select
upplement
o 1257/20
he Select C
ctivities rel
ccordance
SELECT C
Competenc
Committee

Rules;
elating to F
or decision
Procedure
Committee
ary budget
12 and No
Committee
ated to the
with Rule
OMMITTE
ces and d
e of the Ad
Fees;
ns of a fina
e.
e shall ado
t relating to
o 1260/201
e shall ens
e tasks ent
1, paragra
EE OF THE
duties
ministrativ
ncial or bu
opt the bud
o the imple
2.]
ure the go
trusted to t
aph 1.
E ADMINIS
ve Council
udgetary na
dget and a
ementation
vernance a
the Europe
STRATIVE
shall be co
ature;
ny amendi
n of Regula
and superv
ean Patent
E COUNCIL
ompetent t
ing or
ations (EU)
vision of th
Office in
5/84
L
to adopt
)
he
4

SC/10/14
141320004
Rule 2 C

At 1.
ag
E
ac
A 2.
C
co
P 3.
st
ob
th
w
re
re
sh
re
C
E
M 4.
E
sh
Fe
of
of
e
Competen
t their inau
greed to es
uropean P
ccordance
rticle 145(2
ommittee o
ontracting
ursuant to
tates will e
bligations u
heir capacit
will ensure t
eferred to in
enewal fee
hare of dist
egulation. T
ouncil of th
PC.
Mirroring the
PC (see A
hould be co
ees, other
f procedure
f Article 9(5
nces and d
ugural mee
stablished
Patent Orga
with Articl
2) EPC pro
of the Adm
states refe
Article 9(2
nsure com
undertaken
ty as contr
the govern
n Article 9(
s in accord
tribution of
To that end
he Europea
e compete
Articles 33(
ompetent t
rules or de
e. The wor
5) of the R
duties of t
eting of 20
the Select
anisation w
e 9(2) Reg
ovides that
ministrative
erred to in A
2) Regulati
mpliance wi
n in the EP
racting stat
ance and s
(1) of the r
dance with
f the renew
d they will
an Patent
ences of the
1)(2) and 4
to adopt an
ecisions of
rding used
Rules of pro
the Select
March 201
t Committe
within the m
gulation (E
t the powe
Council w
Article 142
on (EU) N
ith said reg
PC and will
tes to the E
supervisio
regulation a
h Article 12
wal fees in
set up a S
Organisati
e Administ
46 EPC), it
nd amend
f a financia
in propose
ocedure of
Committe
13, the par
ee of the A
meaning of
U) No 125
rs and func
will be dete
2(1) EPC.
o 1257/20
gulation in
l co-operat
EPC, the p
n of the ac
and will en
of the reg
accordanc
elect Com
ion within t
trative Cou
t is propose
the presen
al or budge
ed paragra
the Select
ee
rticipating m
Administrati
f Article 14
57/2012.
ctions of th
rmined by
12, the par
fulfilling th
te to that e
participating
ctivities rela
nsure the s
gulation and
ce with Art
mittee of th
the meanin
uncil as pro
ed that the
nt rules, th
etary nature
aph 1 corre
t Committe
member st
ive Counci
45(1) EPC
he Select
the group
rticipating
eir interna
end. Moreo
g member
ated to the
setting of th
d the settin
icle 13 of t
he Adminis
ng of Articl
ovided for i
e Select Co
e Rules re
e and its o
esponds to
ee.
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/10/14
141320004
[P 5.
Ad
bu
N
Pa 5.
su
ac
E
Th 6.
pr
P

e
Paragraph
dministrati
udget relat
o 1260/20
aragraph 2
upervision
ccordance
PC.
he membe
rocedures
rocedure o
2 provides
ve Counci
ting to the
12.]
2 stipulates
of the acti
with Articl
ership, cha
and functio
of the Sele
s that the S
l adopts th
implement
s that the S
vities relat
e 9(2) Reg
irmanship,
oning of th
ct Commit
Select Com
he budget a
tation of Re
Select Com
ted to the t
gulation (E
, voting rig
he Select C
ttee.
mmittee as
and any am
egulations
mmittee wil
asks entru
U) No 125
hts and all
Committee
a sub-bod
mending or
(EU) No 1
ll ensure th
usted to the
57/2012 an
other issu
are laid do
dy of the
r suppleme
1257/2012
he governa
e EPO, in
nd Article 1
ues related
own in the
8/84
entary
and
ance and
45(1)
d to the
Rules of
4

SC/10/14
141320004
CHAPTER
Rule 3
The Unita
President
Select Co
3, EPC sh



e
F R III
S
F
O
ary Patent P
of the Eur
ommittee o
hall apply m
FUNCTION
SPECIAL D
Functions
Office
Protection
ropean Pat
f the Admi
mutatis mu
NS AND PO
DEPARTM
and powe
Division re
tent Office
nistrative C
utandis
OWERS O
MENTS OF
ers of the
eferred to i
, who shal
Council. To
OF THE PR
THE EPO
President
in Rule 4 s
l be respon
o this end,
RESIDENT
O
t of the Eu
shall be ma
nsible for i
Article 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/10/14
141320004
Rule 3 F

P 1.
pr
i.e
fa
en
th
ou
Th 2.
ac
U
C
In 3.
fu
th
pr
Ac 4.
en
ad
A
C
co
Th
st
8(
m
E
e
Functions
roposed R
rovided for
e. direct th
act the Unit
ntrusted to
his division
ut the task
he propose
ccording to
nitary Pate
ouncil (see
n accordan
unctions an
hat Article 1
ractice of t
ccordingly
nsure the f
doption of
rticle 10(2)
ommittee a
ome within
his is, of co
tates to sub
(2) of the R
managemen
PO to the
s and pow
Rule 3 reite
r in the EP
e special d
tary Patent
o the EPO
. This Divis
s entrusted
ed Rule als
o which the
ent Protect
e also Artic
ce with Art
nd powers
10(2) and (
he Europe
, the Presi
functioning
internal ad
)(a) EPC).
any propos
n the comp
ourse, with
bmit any p
Rules of Pr
nt report w
Select Com
ers of the
rates and
C and in th
departmen
t Protectio
under Rule
sion, pursu
d to the EP
so reflects
e Presiden
tion Divisio
cle 10(1) E
ticle 143(2
set out in A
(3) EPC sh
ean Patent
dent of the
g of the Un
dministrativ
He will als
sal for ame
etence of t
hout prejud
proposal to
rocedure o
will have to
mmittee (S
e Presiden
clarifies th
he present
t establish
n Division
e 1(1) will b
uant to Rul
PO under R
the princip
t of the EP
on to the S
EPC).
2) EPC, and
Article 10(2
hall apply m
Organisat
e EPO will
itary Paten
ve instructi
so have the
ending the
the Select
dice to the
the Select
of the Selec
be submitt
See Article
t of the Eu
e Presiden
Rules: it s
ed under A
establishe
be carried
le 4(2), wil
Rule 1(1).
ple set out
PO is respo
elect Com
d instead o
2) and (3)
mutatis mu
tion.
in particula
nt Protectio
ons and in
e possibilit
present R
Committee
possibility
t Committe
ct Committ
ted each y
10(2)(e) E
uropean P
nt's manag
sets out the
Article 143
ed under R
out under
l be respon
in Article 1
onsible for
mittee of th
of enumera
EPC, it is
utandis, foll
ar take all
on Division
nformation
ty to submi
Rules or for
e (see Arti
of the part
ee in accor
tee. Furthe
year by the
EPC).
Patent Offi
gement fun
e power to
3 EPC whic
Rule 4(1). T
the respon
nsible for c
145(1) EPC
the activiti
he Adminis
ating all the
proposed t
lowing the
necessary
n, including
to the pub
it to the Se
r decisions
cle 10(2)(c
ticipating m
rdance with
ermore, 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/10/14
141320004
Rule 4 U

U 1.
th
th
gr
th
of
E
S
sp
It 2.
P
ad
N
m
fo
Th
de
Se
A
pa
ha
U
G 3.
Pa
qu
Ag
ac
le
e
Unitary Pa
nder Articl
he authoris
he EPO. Ac
roup of Co
hese additio
f the EPO
PC shall a
elect Com
pecial depa
is propose
rotection D
dditional ta
o 1257/20
member sta
or these ad
herefore, t
epartments
earch, Exa
ppeal will n
articular, a
ave to be b
PC Agreem
Given the pr
atent Prote
ualified me
greement w
ctions unde
egally quali
atent Prot
e 143(1) E
sation prov
ccording to
ontracting S
onal tasks
shall direc
apply mutat
mittee of th
artments s
ed to set up
Division". S
asks referre
12 and ent
ates. The d
dditional tas
here is a n
s entrusted
amining, O
not have a
actions aga
brought be
ment) and
redominan
ection Divis
ember (see
which lays
er Article 3
fied judges
ection Div
EPC, the gr
ided for in
o Article 14
States may
. Moreover
t such spe
tis mutand
he Adminis
set up unde
p such a s
Such a spe
ed to in Art
trusted to t
epartment
sks lying o
need to set
d with the p
Opposition a
any respon
ainst decisi
efore the U
not before
ntly legal na
sion, it is p
e also Artic
s down that
32(1)(i) UP
s.
vision
roup of Co
Article 142
43(2) EPC,
y be set up
r, Article 14
ecial depart
is. Finally,
strative Co
er Article 1
pecial dep
ecial depart
ticle 9, par
the EPO u
ts referred
outside the
t up a spec
procedures
and Legal
sibility whe
ons of the
nified Pate
e the EPO
ature of the
proposed th
cle 20(2) E
t any pane
PC Agreem
ontracting S
2(1) EPC,
, special de
p within the
43(2) EPC
tments and
pursuant t
ouncil supe
43(2) EPC
partment an
tment will b
ragraph 1,
nder Rule
to in Articl
normal EP
cial departm
s laid down
Divisions a
en it comes
Unitary Pa
ent Court (s
Boards of
e decisions
hat its dec
PC). This
el of the ce
ment shall s
States hav
may give a
epartments
e EPO in or
C lays down
d that Artic
to Article 1
ervises the
C.
nd to name
be respons
Regulation
1(1) by the
e 15 EPC
PO grant p
ment. This
n in the EP
as well as
s to the un
atent Prote
see Article
Appeal.
s to be tak
isions be t
is in line w
ntral divisi
sit in a com
ing availed
additional t
s common
rder to car
n that the P
cle 10(2) an
145(1) EPC
activities o
e it "Unitary
sible for th
n (EU)
e participa
are not res
procedure.
s will clarify
PC, namely
the Boards
nitary paten
ection Divis
es 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/10/14
141320004
Pa 4.
w
in
le
to
E
co
N 5.
P
be
ta
re
in
D
ke

e
aragraph 4
who are not
ndividual du
egal difficul
o formalitie
PO, e.g. w
omplex leg
o additiona
rotection D
e the existi
asks identic
esponsible
n its capaci
ivision. By
ept low.
4 foresees
t legally qu
uties falling
ties. Accor
s officers u
where a req
gal questio
al administ
Division. It
ing staff of
cal or simil
. The depa
ty as Unifie
y using the
that the P
alified mem
g to the Un
rdingly, ce
under the c
quest is no
ns.
trative infra
will in fact
f the Legal
ar to those
artment wil
ed Patent
existing in
resident of
mbers (i.e.
nitary Pate
rtain aspec
conditions
t disputed
astructure
be a virtua
Division u
e for which
l thus wea
Protection
nfrastructur
f the EPO
. formalities
nt Protectio
cts of the p
to be dete
or where a
will be req
al division
under Articl
h the Unifie
ar two hats
Division o
re and exp
may entru
s officers)
on Division
procedures
ermined by
a task doe
quired for th
in the sens
le 20 EPC
ed Patent D
and will ta
or in its cap
pertise, add
st to emplo
the execut
n, and invo
s may be d
the Presid
s not invol
he Unitary
se that its s
which dea
Division wil
ake decisio
pacity as L
ditional 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) At
re
pr

(2) U
w
e
P
O
N
T R I
G
t the reque
egistered b
rotection.
nitary effec
with the sam
PROCEDU
OFFICE UN
NO 1260/20
THE REQU
General
est of the p
by the Euro
ct shall on
me set of c
RES TO B
NDER REG
012
UEST FOR
proprietor o
opean Pate
ly be regis
claims in re
BE CARRI
GULATION
R UNITARY
of the Euro
ent Office i
tered if the
espect of a
ED OUT B
NS (EU) N
Y EFFECT
opean pate
n the Regi
e European
ll the partic
BY THE EU
O 1257/20

ent, unitary
ister for un
n patent ha
cipating Me
UROPEAN
012 AND
effect sha
nitary paten
as been gr
ember Sta
15/84
N PATENT
all be
nt
ranted
tes.
4

SC/10/14
141320004
Rule 5 T

I. R
Pa 1.
N
pr
Pa 2.
th
op
to
co
R
co
w
w
th
ra
Th 3.
ef
ha
N
m
un
in
R
W 4.
al
of
ef
(E

e
The reque
Requireme
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tary effect
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gnation of
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egulation
4

SC/10/14 e 17/84
141320004


SC/10/14
141320004
N 5.
ef
fin
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be
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emed not to
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prietors in
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all the partic
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), which pr
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PC contract
all the prop
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quest for un
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opean pate
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for the requ
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(EU) No 1
ocedure fo
ayment, or
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n fact, the
ferent par
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vitation of t
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or requestin
partial pay
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alidated in
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uest. If not
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18/84
nitary
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and could
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will then
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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/10/14
141320004
Rule 6 R

R 1.
th
Pa 2.
(E
gr
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In 3.
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S 4.
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e
Requirem
Rule 6 sets
he "substan
aragraph 1
EU) No 125
rant is pub
ffect. [The
fficulties w
ubsequent
n order to a
electronic)
heckboxes
hould the p
equest for u
espect of th
owever be
nalogy with
rticle 87(1)
or unitary e
or unitary e
pecified in
aragraph 2
Regulation (
he requirem
hat the EPO
roprietor. [A
espect of th
emarks und
he patent to
ase a repre
anslation r
rticle 6(1)
he transitio
ents of th
out the for
ntive" requ
1 of the pro
57/2012, s
blished in th
prohibition
with respec
ly filing a n
avoid any f
forms for f
s alerting th
patent prop
unitary effe
he period s
filed within
h the re-es
) EPC (see
effect, must
effect filed t
Rule 6(1),
2 specifies
(EU) No 12
ment under
O can chec
As regards
he same o
der Rule 5
o which un
esentative
requiremen
Regulation
nal period
e request
rmal requir
irements s
oposed rul
tipulates a
he Europea
n to withdra
ct to the co
new reques
formal defic
filing the re
he patent p
prietor omi
ect with the
specified in
n two mon
stablishmen
e Rule 22(2
t also be c
too late, i.e
see the ex
the langua
257/2012,
r the EPC f
ck the requ
s the decla
r different
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nitary effect
has been
nt of Article
n (EU) No
is termina
for unitar
rements fo
set out in R
e, in accor
a time limit
an Patent
aw the req
nditions of
st.]
ciencies, th
equest for u
proprietor t
it to file a r
e EPO, he
n Rule 6(1)
ths of expi
nt of rights
2)) and the
completed i
e. after the
xplanatory
age to be u
namely the
for the writ
uester's ide
aration to b
participatin
mber of the
t will be att
appointed
e 9(1)(h) R
1260/2012
ted.
ry effect
r obtaining
Rule 5(2).
rdance with
of one mo
Bulletin for
uest provid
f withdrawa
he EPO int
unitary effe
to all the re
request for
may obtai
). The requ
iry of the a
s for the pri
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in this peri
e expiry of t
y remarks o
used in acc
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tten form. P
entity, i.e. w
be filed in c
ng membe
European
tributed. P
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2. It will hav
g unitary ef
h Article 9(
onth after th
r filing the
des legal c
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tends to pr
ect which w
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act, i.e. the
od (Rule 2
the one-mo
on Rule 7 b
cordance w
e of procee
Paragraph
whether he
case of mu
r states, se
n patent is
aragraph 2
ph 2(d) sets
(EU) No 12
ve to be de
ffect, as op
(1)(g) Regu
he mention
request fo
certainty an
possibility
rovide app
will contain
mal require
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blishment o
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oned perio
od under
filing of th
22(3)). For
onth period
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with Article
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h 2(a) is req
e is in fact
ltiple propr
ee the exp
required to
2(c) is nee
s out the tr
257/2012 a
eleted 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 patent
rietors 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/10/14
141320004
Rule 7 E

In 1.
pr
st
sh
co
kn
E
in
th
pa
A
re
re
he
by
Pa 2.
su
ca
co
al
en
ex
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re
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re
pr
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un

e
Examinati
n view of th
rocedure fo
traightforw
hould be a
ourts (inclu
now as soo
uropean p
nterest in a
he unitary e
atent is de
rticle 4(2)
equesting u
emedy min
eard under
y the EPC
aragraph 1
ubstantive
an register
ommunicat
so provide
nsure that
xamination
efinition, th
equirement
ffect is for
equired tran
roprietor in
egistration
anslation,
n the Regis
nitary effec
ion of the
he overridin
or requesti
ard as pos
s short as
uding the U
on as poss
atent. Furt
swift regis
effect of a
emed not t
Regulation
unitary effe
or formal d
r Article 11
and with w
1 governs t
as provide
r the unitar
te the date
es for a leg
the date o
n procedure
he date of r
ts set out i
example fi
nslation un
n reply to a
of unitary e
and not the
ster for unit
ct.]

request b
ng need fo
ing and reg
ssible. In p
possible b
Unified Pat
sible wheth
thermore, t
stration of t
European
to have tak
n (EU) No
ect do have
deficiencie
3(1) EPC,
which they
the case w
ed for unde
ry effect in
e of this reg
gal definitio
of registrati
e for regist
registration
n Rule 6 a
led within
nder Rule 6
an invitation
effect will b
e date on w
tary patent
by the EPO
r legal cert
gistering u
articular, th
bearing in m
ent Court)
her unitary
the particip
the unitary
patent has
ken effect
1257/2012
e a legitima
s containe
as is the c
are acqua
where all re
er Rules 5(
the Regist
gistration to
on of the co
on is not d
tering unita
n of unitary
re complie
the one-m
6(2)(d), an
n by the EP
be the date
which the
t protection
O
tainty and
nitary effec
he overall
mind that t
and other
effect will
pating mem
y effect sinc
s been reg
as a nation
2). On the o
ate interes
ed in the re
case for an
ainted.
equirement
(2) and 6, a
ter for unita
o the paten
oncept of
dependent
ary effect a
y effect sha
ed with. Wh
onth perio
d said tran
PO under R
e of receip
EPO would
n following
in the inter
ct should b
duration of
he public,
national a
be attribut
mber states
ce they ha
istered, tha
nal patent
other hand
st in obtaini
equest and
ny other pr
ts, both for
are met. In
ary patent
nt proprieto
date of reg
on the dur
at the EPO
all be the d
here a requ
d of Rule 6
nslation is f
Rule 7(3),
t by the EP
d in fact re
examinati
rest of clar
be as
f this proce
patent offic
authorities s
ted to a gra
s have a p
ave to ensu
at the Euro
in their ter
d, patent pr
ing possib
in getting
rocedure g
rmal and
n this case
protection
or. [Paragr
gistration s
ration of th
O. Pursuant
date on wh
uest for un
6(1) but wi
filed by the
then the d
PO of said
egister unita
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22/84
rity, the
edure
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should
anted
articular
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roprietors
ilities to
duly
governed
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and
raph 1
so as to
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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/10/14
141320004
Pa 3.
pe
th
su
ex
R
ef
th
re
In 4.
a
th
in
pu
gi
m
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of
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su
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re
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aragraph 2
eriod of Ru
he request
ubstantive
xpiry of the
Rule 5(2) ar
ffect has b
he EPO can
emarks on
n cases (a)
further tim
he patentee
nviting the r
ursuant to
ven the po
month perio
Rule 22(2)).
f the reque
e-establish
months of th
aragraph 3
ubstantive
equirement
as usual in
emedy the
equester fa
ther legal r
Rule 22(6)),
rought befo
rticle 66 Ag
2 governs t
ule 6(1) an
is filed afte
requireme
e one-mon
re not met.
een filed b
nnot issue
Rule 6 for
) to (c), the
me limit for
e the oppo
requester t
Rule 20(1
ossibility to
od specified
. Procedura
est, inform
ment of rig
he expiry o
3 governs t
requireme
ts of Rule 6
n proceedi
deficiency
ails to obse
remedy is a
, i.e. the EP
ore the Un
greement o

three scen
d the subs
er the expi
ents of Rule
th period o
The fourth
by the pate
a rejection
more infor
e EPO will r
correcting
ortunity to c
to commen
). It is prop
o request re
d in Rule 6
ally speaki
the patent
ghts in resp
of that perio
the case w
ents of Rule
6(2) have n
ngs before
y within a n
erve this pe
available a
PO takes a
ified Paten
on a Unifie
narios: (a) t
stantive req
ry of the o
e 5(2) are
of Rule 6(1
h possible
nt propriet
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rmation on
reject the r
deficiencie
comment, i
nt under Ar
posed that
e-establish
6(1) within
ing, the EP
t proprietor
pect of the
od.
where the o
e 5(2) are
not been fu
e the EPO
non-extend
eriod, re-es
and the req
a final deci
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the reques
quirements
ne-month
met; (c) th
) and the s
scenario,
tor, is not g
bsence of a
n this scena
request for
es. Before
i.e. send o
rticle 113(1
in case (b
hment of rig
two month
PO may the
r that he m
period spe
one-month
met but wh
ulfilled. In s
give the
able period
stablishme
quest for un
sion again
ee Article 3
Court).
st is filed w
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period of R
e request
substantive
in which n
governed b
a request. S
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it does so
ut at least
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ghts in res
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ay still req
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period of
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such a cas
requester
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ent of rights
nitary effec
nst which a
32(1)(i) in
within the on
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Rule 6(1) a
is filed afte
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o request f
by paragra
See the ex
ffect withou
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ester shou
spect of the
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quest
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Rule 6(1) a
of the forma
se, the EPO
r the oppor
month. If the
s is ruled o
ct is rejecte
an action ca
conjunctio
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
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ld be
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eriod (see
rejection
within two
and the
al
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rtunity to
e
out, no
ed (see
an be
n with
4


SC/10/14
141320004
CHAPTER
Rule 8
(1) P
ap
E
th
U

(2) C
pr

(a) sm
re

(b) na

(c) no
N

(3) If
pr

(4) If
re
in
pa

(5) Th
P
E

e
C R II
D
roprietors
pplication w
nglish, Fre
heir residen
nion and th
ompensati
roprietor fa
mall and m
ecommend
atural pers
on-profit or
o 1290/20
the patent
roprietor is
the Europ
equest for u
nitial applic
aragraphs
he compen
CT applica
uropean U
COMPENS
Definition a
of Europea
was filed in
ench or Ge
nce or prin
hey are an
ion for tran
alling within
medium-siz
dation 2003
sons; or
rganisation
13, univers
t has multip
s an entity o
ean patent
unitary effe
ant and th
1 and 2.
nsation sch
ations origi
Union other
SATION SC
and benef
an patents
n an officia
erman shal
cipal place
n entity or a
nslation co
n one of th
ed enterpr
3/361/EC d
ns as defin
sities and p
ple proprie
or a natura
t applicatio
ect was file
e proprieto
heme prov
nally filed
r than Engl
CHEME
ficiaries
with unita
al language
l be entitle
e of busine
a natural p
sts shall be
e following
rises as de
dated 6 Ma
ned in Artic
public rese
etors, comp
al person r
on or the E
ed, compen
or of the pa
vided for in
at a receiv
lish, Frenc
ary effect fo
e of the Eu
ed to compe
ess is in a m
person refe
e granted,
g categorie
efined in Eu
ay 2003;
cle 2, parag
earch orga
pensation w
referred to
European p
nsation wil
atent fulfil t
paragraph
ving office
ch or Germ
or which th
uropean Un
ensation fo
member st
erred to in p
on reques
es:
uropean C
graph 1(14
nisations.
will be gra
in paragra
patent was
l be grante
the conditio
h 1 shall al
in an offici
man.
e Europea
nion other t
or translati
tate of the
paragraph
st, to a pate
ommission
4) of Regul
nted only i
aph 2.
transferre
ed only if b
ons referre
lso apply to
al languag
25/84
an patent
than
on costs if
European
2.
ent
n
ation (EU)
f each
d before a
both the
ed to in
o Euro-
ge of the
4
f


SC/10/14
141320004
Rule 8 C

U 1.
un
an
la
st
Be 2.
m
(a
(b
(c

Th 3.
20
re
ac
si
pe
ba
th
S
Th 4.
pa
pa
pr
or
sh
U 5.
te
de
R
20

e
Compensa
nder Rule
nitary effec
n EU officia
anguages)
tate.
esides geo
must also be
a) small an
b) natural p
c) non-prof
he definitio
003/361/EC
ecommend
ctivity, irres
zed enterp
ersons, wh
alance-she
he capital is
ME.
he definitio
aragraph 1
articipation
rofit legal e
r which has
hareholder
niversities
exts, so det
efinitions a
Rule 6 EPC
014, OJ EP
ation sche
8(1), the s
ct granted
al languag
if their res
ographical
e in one of
d medium-
persons; or
fit organisa
on of SMEs
C of 6 May
dation defin
spective of
prises (SM
hich have a
eet total no
s held dire
on of non-p
1(14) of Re
n in the fram
entity' mea
s a legal o
rs or individ
and public
tails will be
as set out w
C (cf. CA/97
PO 2014, A

eme: defin
scheme is
on the bas
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idence or p
location a
f the follow
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r
ations, univ
s is that se
y 2003 on
nes an ente
f its legal fo
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an annual t
ot exceedin
ctly or indi
profit organ
egulation (E
mework pr
ans a legal
r statutory
dual memb
c research
e presente
with a view
7/13 Rev. 1
A23).
nition and
open to pr
sis of an ap
an English
principal p
nd languag
wing catego
erprises (S
versities an
et out in Eu
micro, sma
erprise as
orm. The c
de up of en
turnover no
ng EUR 43
rectly by a
nisations is
EU) No. 12
rogramme
entity whic
y obligation
bers.
organisati
d in an EP
w to the am
1 and the n
beneficia
roprietors o
pplication t
, French a
lace of bus
ge used, b
ories:
SMEs);
nd public re
uropean Co
all and med
any entity
category of
nterprises w
ot exceedi
3m, and for
another com
s that set o
290/2013 la
for researc
ch by its le
n not to dist
ions are no
PO notice, r
mendment o
notice from
aries
of Europea
they thems
nd Germa
siness is in
beneficiarie
esearch or
ommission
dium-sized
engaged i
f micro, sm
which emp
ng EUR 50
r which no
mpany whi
out in Articl
aying down
ch and inn
egal form is
tribute prof
ot express
reflecting t
of the scop
m the EPO
an patents
selves have
n (the EPO
n an EU me
es of the sc
rganisation
n recomme
d enterpris
n an econo
mall and me
ploy fewer t
0m or an a
more than
ich is itself
e 2,
n the rules
ovation. T
s non-profit
fits to its
ly defined
these bodie
pe of applic
dated 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
J anuary
4

SC/10/14 e 27/84
141320004


SC/10/14
141320004

To 6.
pa
m
el
Th 7.
en
fu
th
fo
or
co
ty
Th 8.
ex
re
B
in
le
A


e
o prevent a
atent in ord
multiple pro
igibility req
he rule's p
ntity that fil
ulfilled whe
hose subm
ollowing a t
riginal app
ompensatio
ype of entit
he scheme
xpressly st
eceiving off
ureau) in a
nternationa
egally equiv
rticle 5 of R
abuse, suc
der to qual
prietors, co
quirements
aragraph 1
led the pat
en the Euro
itted after o
transfer or
licant and
on) fulfil th
y.
e applies to
tated in Ru
fice in the
an EU (but
al applicatio
valent to a
Regulation

ch as maki
ify for the
ompensati
s.
1 governs
tent applica
opean pate
ownership
merger); h
the new ow
e eligibility
o Euro-dire
ule 8(5), to
23 countrie
t non-EPO)
on for whic
regular Eu
n (EU) No.
ng a natur
scheme, R
on will be
compensa
ation; in su
ent applicat
of the app
here, comp
wner (for t
y criteria as
ect applica
Euro-PCT
es eligible
) official la
ch the EPO
uropean ap
1260/2012
ral person o
Rule 8(3) p
granted on
ation reque
uch cases,
tion is filed
plication or
pensation w
he latter w
s regards n
ations filed
T applicatio
for the sch
nguage. U
O is a desig
pplication,
2.
or SME a c
rovides tha
nly if each
ests submit
the eligibi
d. Its parag
r patent ha
will be gran
when reque
not only na
at the EPO
ons origina
heme (or th
nder Articl
gnated or e
and as su
co-propriet
at if there a
of them fu
tted by the
lity criteria
graph 4 gov
s changed
nted only if
esting
ationality b
O and also
lly filed at
he Internat
le 153(2) E
elected offi
ch 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) Th
th
in
re
of
R
pa

(2) Th
co
no
th

(3) Th
lic
re

(4) N
pr
be

e
L R III
F
he propriet
he Europea
nvention as
enewal fee
f the statem
Rules relatin
atent prote
he stateme
ommunicat
ot take effe
he Europea
he stateme
cence is re
ecording of
o request f
rotection s
een filed, u
LICENCES
Filing of th
tor of a Eu
an Patent O
s a licensee
s for the E
ment shall
ng to Fees
ection.
ent referred
tion to this
ect until the
an Patent O
ent referred
ecorded in
f such a lic
for recordi
hall be adm
unless that
S OF RIGH
he stateme
ropean pa
Office that
e in return
European p
be reduce
s. The state
d to in para
effect to th
e amount b
Office.
d to in para
the Regist
cence is pe
ng an excl
missible af
t statement
HT
ent by the
atent with u
he is prep
for approp
patent with
ed; the amo
ement sha
agraph 1 m
he Europe
by which th
agraph 1 m
ter for unita
ending befo
lusive licen
fter the sta
t is withdra
patent pr
unitary effe
pared to allo
priate comp
unitary eff
ount of the
ll be entere
may be wit
ean Patent
he renewa
may not be
ary patent
ore the Eur
nce in the R
atement ref
awn.
roprietor
ect may file
ow any pe
pensation.
fect which
reduction
ed in the R
hdrawn at
Office. Su
l fees were
e filed as lo
protection
ropean Pa
Register fo
ferred to in
e a stateme
erson to us
In that cas
fall due aft
shall be fix
Register for
any time b
ch withdra
e reduced
ong as an e
or a reque
atent Office
or unitary p
n 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/10/14
141320004
Rule 12

A 1.
E
th
lic
sp
co
N
to
ad
th
re
A 2.
ta
an
pr
st
P 3.
A
re
sp
w
ef
Pa 4.
re
st

e
Filing of
rticle 8(1)
uropean p
hat the prop
censee in r
pecifies tha
ontractual
o 1257/20
o in Article
dds that th
he time the
egulation.
rticle 9(1)(
ask of rece
nd their wit
roprietor of
tandardisat
roposed R
rticle 8 Re
enewal fee
pecifies tha
with Article 9
ffect if the
aragraph 3
egister. Par
tatement h
a stateme
Regulation
atent with
prietor is p
return for a
at a licence
licence. In
12, renewa
8(1) of sai
e patent p
e EPO rece
c) Regulat
iving and r
thdrawal, a
f the Europ
tion bodies
Rule 12(1) l
gulation (E
reduction
at the state
9(1)(c) Reg
amount by
3 deals wit
ragraph 4
as been fil
ent by the
n (EU) No
unitary eff
prepared to
appropriate
e obtained
accordanc
al fees whi
d regulatio
roprietor s
eives the st
tion (EU) N
registering
and of licen
pean paten
s.
ays down
EU) No 125
will be fixe
ement can
gulation (E
y which the
th cases w
specifies t
led, unless

patent pr
1257/2012
fect may fil
o allow any
e compens
under the
ce with Art
ich fall due
on will be re
hould get a
tatement re
No 1257/20
the statem
nsing the c
nt with unit
the proced
57/2012 an
ed in the R
be withdra
EU) No 125
e renewal f
here an ex
hat no exc
s it is withd
roprietor
2 provides
e a statem
y person to
sation. Para
e Regulatio
ticle 11(3)
e after rece
educed. R
a reduction
eferred to
012 provide
ments on lic
commitmen
tary effect
dure for fili
nd specifie
Rules relatin
awn by the
57/2012. T
fees were r
xclusive lic
clusive lice
drawn.
that the pr
ment with th
o use the in
agraph 2 o
on will be tr
Regulation
eipt of the s
ecital 15 o
n of the ren
in Article 8
es that the
censing re
nts underta
in internati
ng the stat
es that the
ng to Fees
e proprietor
The withdra
reduced is
ence is rec
nce may b
roprietor of
he EPO to
nvention as
of that prov
reated as a
n (EU)
statement
of the regul
newal fees
8(1) of the
e EPO is gi
eferred to in
aken by the
ional
tement refe
amount of
s. Paragrap
r at any tim
awal will on
s paid to the
corded in t
be 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/10/14
141320004
P 5.
ha
th
di
ap
an
lic


e
ursuant to
ave exclus
he basis of
spute, the
ppropriate
nd Rule 8(
cence agre
Article 32(
sive compe
Article 8 R
Unified Pa
compensa
1) if a requ
eement.
(1)(h) Agre
etence in re
Regulation
atent Cour
ation referr
uest for sam
eement on
espect of a
(EU) No 1
rt will have
red to in Ar
me is mad
a Unified
actions for
257/2012.
to determ
rticle 8 Reg
e by one o
Patent Cou
compensa
. Therefore
ine the am
gulation (E
of the contr
urt, the Co
ation for lic
e, in the ca
mount of the
EU) No 125
racting par
38/84
ourt will
cences on
ase of
e
57/2012
rties to the
4

SC/10/14
141320004
CHAPTER
Rule 13
(1) R
la
in
E
P

(2) A
ye
da
w
be

(3) If
of

(4) A
w
pa
ad

(5) A
of
w
pu
P
co
U
fe
w
pe

(6) R
e
R R IV
P
Renewal fee
ate paymen
n respect of
uropean p
atent Bulle
renewal fe
ear shall be
ate of filing
with unitary
efore they
a renewal
f the due d
ny renewa
within three
atent shall
dditional fe
renewal fe
f the retroa
would have
ublication o
atent Bulle
ommunicat
nified Pate
ee and any
within four m
eriod, para
Rule 51, par
RENEWAL
Payment o
es for Euro
nt shall be
f the years
atent whic
etin.
ee for the E
e due on th
g of the Eu
effect. Re
fall due.
fee is not
date, provid
al fee in res
months of
be deeme
ee shall be
ee in respe
active effec
fallen due
of the men
etin up to a
tion referre
ent Court a
y renewal fe
months of t
agraph 3 sh
ragraphs 4
L FEES
of renewal
opean pate
paid to the
s following
ch benefits
European
he last day
ropean pa
newal fees
paid in du
ded that an
spect of a E
f the public
ed to have
charged in
ect of a Eu
ct provided
under par
ntion of the
and includin
ed to in Ru
attributing u
ee due wit
that latter d
hall apply.
4 and 5 EP
fees for E
ents with u
e European
the year in
from unita
patent with
y of the mo
tent applic
s may not b
e time, the
n additiona
European
cation of th
been valid
n this case
ropean pa
d for in Artic
ragraph 2 i
grant of th
ng the date
ule 7(1) or t
unitary effe
hin four mo
date withou
PC shall ap
European
nitary effec
n Patent O
n which the
ary effect is
h unitary ef
onth contai
cation whic
be validly p
e fee may s
al fee is als
patent with
he mention
dly paid if it
e.
atent with u
cle 4(1) Re
n the perio
he Europea
e of the no
the notifica
ect shall b
onths of th
ut an addit
pply mutatis
patents w
ct and add
Office. Thos
e mention
s published
ffect in res
ining the a
ch led to th
paid more
still be paid
so paid with
h unitary ef
of the gra
t is paid wi
unitary effe
egulation (
od starting
an patent i
otification o
ation of the
e due on t
hat latter da
tional fee.
s mutandis
with unitar
itional fees
se fees sha
of the gran
d in the Eu
spect of the
nniversary
e Europea
than three
d within six
hin that pe
ffect falling
ant of the E
thin that p
ect which, b
EU) No 12
on the dat
in the Euro
of the
e decision o
hat latter d
ate may st
If 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/10/14
141320004
Rule 13

In 1.
pr
w
E
R
sh
gr
E
P 2.
al
al
if
pa
pe
re
If 3.
co
pa
th
th
ha
If 4.
se
pu
un
de
C
Fa
re
A 5.
re
R
de
e
Payment
n accordan
roposed pa
where applic
uropean p
Rules relatin
hall be due
rant of the
uropean P
roposed pa
most ident
igned with
the renew
aragraph 4
eriod is ext
equesting u
the renew
ourtesy ser
aid for the
he Europea
he fee, plus
aving alrea
the renew
end a com
ursuant to
nitary effec
ecision wit
ourt, so an
ailure to pa
edressed u
lternatively
eview of the
Rule 112(2)
ecision cou
t of renew
ce with Art
aragraph 1
cable, add
atent with
ng to Fees
e in respec
European
Patent Bulle
aragraph 2
tical to the
h Rule 51(2
al fees hav
4 provides
tended to t
unitary effe
wal fee has
rvice (and
European
an patent w
s an additio
ady begun.
wal fee is no
munication
Rule 20(2
ct of the los
hin the me
n action ca
ay the rene
using re-es
y, if the find
e finding c
) EPC, said
uld then be
al fees for
ticles 9(1)(
sets out t
itional fees
unitary eff
s. Renewal
ct of the ye
patent wh
etin (see a
2 provides
wording o
2) EPC, wh
ve not bee
for the saf
three mont
ect.
not been p
as is the c
patent app
with unitary
onal fee, in
.
ot paid with
n under Ru
)(d)), notify
ss of rights
eaning of A
annot be br
ewal fee w
tablishmen
ding of the
can be requ
d rule apply
e brought b
r Europea
(e) and 11
the obligati
s in the eve
fect, the am
fees for th
ars followin
hich benefit
lso Article
for the due
of Rule 51(
hich provid
n paid on o
fety period
ths in view
paid on the
current pra
plication u
y effect as
n the six m
hin the add
ule 112(1)
ying the pr
s. The com
Article 32(1
rought aga
within the ad
nt of rights
EPO caus
uested by a
ying mutat
before the
an patents
Regulation
ion to pay
ent of their
mount of th
he Europea
ng the yea
ts from uni
141(1) EP
e date of p
1) EPC. P
es for an a
or before t
of Article
w of the pos
e due date
ctice with r
nder Articl
soon as po
onths follo
ditional six-
EPC (whic
roprietor of
mmunicatio
)(i) Agreem
ainst it befo
dditional si
under Rul
sing the los
applying fo
tis mutandi
Unified Pa
with unita
n (EU) No
the EPO re
r late paym
he fees bei
an patent w
ar in which
itary effect
PC).
payment of
roposed pa
additional p
the due da
141(2) EPC
st-grant pro
, the EPO
respect to
e 86 EPC)
ossible of t
owing the d
-month pe
ch applies
f the Europ
n does not
ment on a
ore the Unif
ix-month p
le 22.
ss of rights
or a decisio
is. An actio
atent Court
ary effect
1257/2012
enewal fee
ment, for th
ng laid dow
with unitary
the mentio
t is publish
f renewal fe
aragraph 3
period of s
te. Propos
C, althoug
ocedure fo
will inform
renewal fe
), the propr
the option
due date, th
riod, the E
mutatis mu
pean paten
t constitute
Unified Pa
fied Paten
period can
s is inaccu
on under
on against
t.
40/84
2,
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e
wn in the
y effect
on of the
ed in the
ees and is
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ix months
sed
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rietor of
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hat period
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atent
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be
rate, a
that
4

SC/10/14 e 41/84
141320004

SC/10/14
141320004
Th 6.
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sixth mont
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non-payme
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period to th
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th to the la
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point 7 ab
enewal fee
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7/2012 (see
ent of Articl
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be due wh
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ce: when th
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ceive mail
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eferring th
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to Rule 13
ue date (se
hus, the ca
the month
he six-mon
the applica
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EPC and e
period sta
n (see Artic
enewal fee
ule 13(3) is
13(4) has
id where th
42/84
4 EPC
he due
Rule
ue date is
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er.
ast day of
on that
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e last day
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alculation
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ble,
ccordance
e lapse
xtends
arts on the
cle 97(3)
is paid
s
the effect
he
4


SC/10/14 e 43/84
141320004

SC/10/14
141320004
P 11.
gr
in
re
re
en
th
ef
E
R
R
on
E
co
U
an
fo
pe
w
P 12.
m
ef
es
w
su


e
roposed pa
rant of the
n particular
egistering u
e-establish
nd of such
he patent p
ffect takes
uropean p
Regulation (
Regulation (
n the date
uropean P
ommunicat
nified Pate
nd (5) EPC
our months
eriod, Rule
within six m
roposed pa
mutandis. R
ffect lapses
stablishme
where a pet
uccessful.
aragraph 5
European
occur in e
unitary effe
ment of rig
a procedu
proprietor b
effect on t
atent in the
(EU) No 12
(EU) No 12
of publicat
Patent Bulle
tion referre
ent Court a
C, which ap
s of the not
e 13(3) app
onths, star
aragraph 6
Rule 51(4) E
s due to th
ent of rights
tition for re

5 covers th
patent but
exceptional
ect takes a
ghts or the
ure, the de
by the EPO
the date of
e Europea
257/2012.
257/2012),
tion of the
etin and up
ed to in Ru
attributing u
pply mutati
tification w
plies, i.e. th
rting from t
6 provides
EPC refers
he non-pay
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view or a r
he case wh
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l circumsta
long time
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f publicatio
n Patent B
Owing to t
, renewal f
mention o
p to and inc
ule 7(1) or t
unitary effe
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he fees can
the date of
that Rule 5
s to the cas
yment of re
ssful. Rule
rehearing u
here the re
e unitary e
ances whe
owing, for
ent of the U
egister unit
PC, the Eu
on of the m
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this retroac
fees are the
f the grant
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s, the rene
additional
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f notificatio
51(4) and
se where a
enewal fees
51(5) gove
under Artic
newal fees
effect is reg
re the proc
r example,
Unified Pat
tary effect
ropean pat
mention of t
accordance
ctive effect
en due for
t of the Eur
e date of th
ation of the
, by analog
ewal fees c
fee. If not
aid with an
on.
(5) EPC do
a European
s and a req
erns the an
cle 81 UPC
s fall due a
gistered. T
cedure for
to a reque
tent Court.
is finally n
tent with u
he grant o
e with Artic
t (see Reci
the period
ropean pat
he notificat
e decision o
gy with Ru
can be paid
paid within
n additiona
o apply mu
n patent w
quest for re
nalogous 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
an
th


e
L R V
L
European
0 years aft
the proprie
ccordance
a renewal
ny addition
he lapse o
nd any add
he date on
LAPSE
Lapse
n patent wit
ter the date
etor of the
with Rule
fee or the
nal fee hav
of a Europe
ditional fee
which the
th unitary e
e of filing o
European
10;
amount un
ve not been
ean patent
e within the
renewal fe
effect shall
of the Euro
patent wit
nder Rule
n paid in du
with unitar
e due perio
ee was due
l lapse:
pean pate
th unitary e
7, paragra
ue time.
ry effect fo
od shall be
e.
nt applicat
effect surre
aph 3, and,
or failure to
deemed to
tion;
enders it in
, where ap
o pay a ren
o have occ
45/84

plicable,
ewal fee
curred on
4

SC/10/14
141320004
Rule 14

Th 1.
un
E
of
tim
R
It 2.
pa
pa
re

e
Lapse
he propose
nitary effec
PC which
f filing of th
me of a ren
Regulation (
is propose
aragraph 1
atent with u
enewal fee
ed rule sum
ct lapses. P
provides th
he applicat
newal fee a
(EU) No 12
ed that the
1(b) should
unitary effe
was due.
mmarises t
Paragraph
hat the term
tion. Parag
and, where
257/2012).
date of eff
d be specif
ect is deem

the situatio
1(a) of the
m of the E
graph 1 (b)
e applicabl
.
fect of the
fied: in suc
med to hav
ons in whic
e proposed
uropean p
covers the
le, any add
lapse in th
h a case, t
ve occurred
ch the Euro
d rule refle
atent is 20
e case of n
ditional fee
he case ref
the lapse o
d on the da
opean pate
cts Article
0 years from
non-payme
e (see Artic
ferred to in
of a Europe
ate on whic
46/84
ent with
63(1)
m the date
ent in due
cle 11(2)
n
ean
ch the
4


SC/10/14
141320004
PART III
CHAPTER
Rule 15
(1) Th
R
E
E

(2) E
of
la
e
IN
R R I
E
he Registe
Regulation (
uropean P
PC.
ntries in th
fficial langu
anguage of
NFORMAT
REGISTER
Establishm
er for unita
(EU) No 12
Patent Reg
he Register
uages of th
f the proce
TION TO T
R FOR UNI
ment of the
ry patent p
257/2012 i
ister kept b
r for unitary
he Europea
edings sha
THE PUBL
ITARY PA
e Register
protection p
s hereby e
by the Euro
y patent pr
an Patent O
all be authe
LIC
TENT PRO
r for unita
provided fo
established
opean Pat
rotection s
Office. In c
entic.
OTECTION
ry patent
or in Article
d as a spec
ent Office
hall be ma
case of dou
N
protection
e 9, paragr
cial part of
under Artic
ade in the t
ubt, the en
47/84
n
raph 1(b),
the
cle 127
three
ntry in the
4

SC/10/14
141320004
Rule 15

Se 1.

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/10/14
141320004
Rule 16

I. G

A 1.
st
ta
to
in
R
N
re
ef
pa
In 2.
un
de
A
Fo 3.
un
R
Th
un
Pa
w
en


e
Entries in
General
rticle 9 Re
tates will, w
asks to be c
o Article 9(1
nclusion of
Register and
o 1257/20
egister con
ffect and a
atent with u
n accordan
nitary pate
edicated, p
rticle 127 E
or reasons
nitary pate
Register cov
his will be
nitary pate
atent Regi
will ensure a
nvisaged to
n the Reg
gulation (E
within the m
carried out
1)(b) Regu
the Regist
d the admi
12, specifi
stituting pa
any limitatio
unitary effe
ce with the
ent protectio
part of the
EPC.
s of legal ce
ent protectio
vering all e
adequately
ent protectio
ster and th
a smooth h
o the Regi

ister for u
EU) No 125
meaning of
t in conform
ulation (EU
ter for unita
inistration t
es that "Re
art of the E
on, licence
ect are reg
e above pr
on is hereb
present Eu
ertainty an
on will be s
entries requ
y reflected
on. Strong
he Registe
handling by
ster of the
unitary pat
57/2012 se
f Article 14
mity with th
) No 1257/
ary patent
thereof. Ar
egister for
European P
, transfer,
gistered."
rovisions, R
by establis
uropean Pa
nd transpar
set up as a
uired for th
d in the onl
g interactio
r for unitar
y the users
Unified Pa
tent protec
ets out that
43 EPC, giv
he "interna
/2012, thes
protection
rticle 2(e) R
unitary pa
Patent Reg
revocation
Rule 15 pro
shed as an
atent Regi
rency for th
a separate
he Europea
ine archite
n between
ry patent p
s. Appropri
atent Cour
ction
t the partic
ve the EPO
al rules" of
se tasks co
within the
Regulation
tent protec
gister in wh
n or lapse o
ovides that
integral bu
ster kept b
he users, t
part of the
an patent w
ecture of th
the classi
rotection (
iate links c
rt.
cipating me
O some ad
the EPO. P
omprise th
e European
n (EU)
ction mean
hich the un
of a Europe
t a Registe
ut special,
by the EPO
he Registe
e European
with unitary
e Register
cal Europe
e.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/10/14
141320004
II. E

Th 4.
se
ha
en
N
ad
III. P
an
co

R 5.
pr
ot
m
ev
It 6.
m
en
se
un
to
sh
A 7.
pa
tra
un
do
de
ha

e
ntries in t
he Registe
et out in Re
as been re
ntries to th
o 1257/20
dditional en
rocedure
nd other r
onjunction
Regulation (
rocedure fo
ther rights
means of ex
vidence an
is therefor
made in the
nsures full
ets out that
nitary effec
o 24 EPC a
hall be reco
European
articipating
ansfer of a
nitary pate
ocuments
eemed not
as been pa
he Regist
er for unita
egulation (
egistered a
e Register
12 is far fro
ntries, the
for enterin
rights and
n with Rul
(EU) No 12
or registeri
(such as r
xecution, in
nd adminis
re propose
e Register f
alignment
t rights and
ct shall be
applying m
orded at th
n patent wit
g member s
a European
ent protectio
satisfying t
t to have b
aid (Rules

er for unit
ry patent p
(EU) No 12
nd the dat
r for unitary
om being e
provision s
ng transfe
any legal
le 20(2)(b)
257/2012 d
ing transfe
rights in rem
n particular
trative fee
ed that Rule
for unitary
t with the c
d transfer o
registered
utatis muta
he request
th unitary e
states (Art
n patent wi
on at the r
the EPO th
een filed u
22(1) and
tary paten
protection h
257/2012,
e of that re
y patent pr
exhaustive
serving as
ers, licenc
l means of
))
does not co
ers, licence
m, pledges
r as to the
.
es 22 to 24
patent pro
current EPO
of such rig
where the
andis purs
of an inter
effect may
ticle 3(2) R
ith unitary
equest of a
hat such tr
until such ti
(2) EPC).
nt protectio
has to cont
in particula
egistration.
rotection of
e, it is prop
model bei
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f executio
ontain any
es (includin
s, security
required r
4 EPC app
otection (se
O practice.
hts relating
e present R
uant to Ru
rested part
only be tra
Regulation
effect is re
an interest
ansfer has
ime as the

on
tain all the
ar the fact t
. However,
f Regulatio
osed to se
ing Rule 14
ding comp
on (Rule 16
y provisions
ng compuls
interests e
equest, do
ply mutatis
ee Rule 20
. According
g to the Eu
Rules (whic
ule 20(2)(b)
ty.
ansferred i
(EU) No 12
ecorded in
ted party a
s taken pla
prescribed
e entries ex
that unitary
, since the
on (EU)
et up a list o
43(1) EPC
pulsory lic
6(1)(j) in
s as regard
sory licence
etc.) and an
ocumentary
mutandis
(2)(b)). Th
gly, Rule 1
uropean pa
ch include
)) provide t
in respect
257/2012)
the Regist
nd on prod
ace. The re
d 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/10/14
141320004
A 8.
in
(o
th
ce
th
in
co
Th 9.
lic
re
If 10.
re
If
re
be
de
U

e
ny kind of
ncludes form
original or a
hat they dir
ertified cop
hree officia
nto one of t
ontract ver
he above p
cences and
equires the
the eviden
equesting t
the reques
egistered w
een receiv
ecisions re
nitary Pate
written evi
mal docum
a copy the
rectly verify
py of the do
l language
the official
rifying the t
principles o
d rights in
e filing of th
nce presen
the transfe
st complies
with the dat
ed by the E
egarding en
ent Protect

dence suit
mentary pro
reof) or oth
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ocument. W
es of the EP
languages
transfer is
on standar
rem. The r
he instrume
nted is foun
r according
s with the r
te on which
EPO, whic
ntries in th
tion Divisio
table to pro
oof such as
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fer. In case
Where the
PO, the EP
s. A declara
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gly and inv
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nts of Rule
est, the req
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ansfer is ad
ument of tr
ts or extrac
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ocument is
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ly to the re
means of ex
itself.
ry, the EPO
emedy the
e 22(1) EP
quired evid
The compe
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dmissible. T
ransfer itse
cts thereof
may ask fo
s not in one
rtified trans
parties to
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xecution, h
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stated def
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dence or th
etent depar
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54/84
This
elf
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or a
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slation
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of
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the party
ficiencies.
nsfer is
he fee has
rtment for
s the
4

SC/10/14 e 55/84
141320004



SC/10/14
141320004
A 11.
pa
(E
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A
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(E
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ex
A 12.
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P 14.
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EU) No 125
se to rights
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uropean p
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EU) No 125
he grant, es
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pon reque
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ates as reg
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stablishme
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ill be recor
cence if the
s a sub-lice
the Regist
explanator
est and sub
cences an
he EPO tha
at he conse
on of licens
of the Eur
Article 9(1
ates shall g
ts underta
ernational s
he licencin
rties intere
ber, patent
ommitmen
or the succ
to implem
parties se

th unitary e
of the partic
It may, in r
nd may be
EU) No 125
h unitary ef
ards their
Rule 22(1)
ent or trans
European p
rded in the
e applicant
ence where
ter for unita
ry remarks
bject to the
d other rig
at the right
ents to the
sing comm
ropean pat
1)(c), Regu
give the EP
ken by the
standardis
ng commitm
ested in imp
t claims, th
t. This can
cessful wid
enters of t
eking to lic
effect may
cipating me
respect of a
the subjec
57/2012). M
ffect are go
respective
and (2) E
sfer of such
patent with
Register f
t and the lic
e it is grant
ary patent
8 and 9 as
payment o
ghts are ca
has lapse
cancellatio
mitments:
tent with u
ulation (EU
PO the task
e proprietor
ation bodie
ments in th
plementing
he proprieto
n facilitate t
despread a
the standar
cense them
be license
ember stat
all the part
ct of legal m
Moreover,
overned by
e territories
PC do also
h rights an
h unitary ef
for unitary
censee so
ted by a lic
protection
s to the sta
of the pres
ncelled on
d, or of a d
on (Rule 2
: only on e
unitary eff
U) No 1257
k to receive
r of the Eu
es.
he Registe
g a certain
or to addre
the bilatera
adoption of
rd that the
m.
ed in respe
tes (Article
ticipating m
means of e
compulsor
y the laws
(see Reci
o apply to t
d any lega
ffect (see R
patent prot
require. A
censee wh
(see Rule
andard of p
scribed adm
productio
declaration
3(2) EPC)
express re
fect (Rule
/2012, the
e and regis
ropean pat
r for unitar
standard a
ess for lice
al licensing
f a standar
patented t
ect of the w
e 3(2) Regu
member sta
execution (
ry licences
of the part
tal 10 Reg
the registra
al means o
Rule 23(1)
tection as
A licence w
ose licence
es 24 (a) an
proof.
ministrative
n of docum
n of the pro
.
equest of
16 (1)(k))
participati
ster licensi
tent with u
ry patent p
an overvie
ncing and
g negotiatio
rd and to p
technologi
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/10/14
141320004
Th 16.
ha
as
un
vo
up
in
fil
un
O 17.
un
re
R
V. S

It 18.
of
he
of
A
on
Th 19.
su
go
la
in
E
or
In 20.
In
av


e
herefore, t
ave the lice
ssociation
nitary pate
oluntary, n
pon expres
nformation
ed by the p
ndertaken
Once a licen
nitary effec
egistered in
Rules 22 to
urrender o
is propose
f a declara
e surrende
f receipt of
rticle 3(2)
nly be surr
he validity
urrender is
overns the
aw applies
ncluding the
PO will me
r partial su
n case of a
nstead, the
vailable to
here may
ensing com
but also to
ent protectio
ot subject
ss request
will be pub
patent pro
in Europea
nce has be
ct as a resu
n the Regis
24 EPC w
of the Eur
ed to enab
ation filed b
ers his Euro
f the declar
Regulation
rendered w
of the surr
s to be sub
e European
both to the
e question
erely act as
rrender.
partial sur
e new set o
the public

be an inter
mmitment m
o the outsid
on. The en
to the pay
by the pat
blished by
prietor for
an and inte
een grante
ult of the li
ster for uni
which apply
ropean pat
le the regis
by the prop
opean pate
ration of su
n (EU) No
with respec
render can
sumed und
n patent wit
e condition
of whethe
s a recipien
rrender, no
of claims as
via online
rest for the
made publ
de world vi
ntry in the r
ment of an
tent proprie
the EPO a
the purpos
ernational
d by the pr
cencing co
itary paten
y mutatis m
tent with u
stration in
prietor of a
ent with un
urrender w
1257, the E
ct to all the
nnot and w
der Article
th unitary e
ns, effects a
er a partial
nt of the de
o new spec
s filed by th
file inspec
e holder of
ic not only
ia the publ
register of
n administr
etor (see R
as to which
se of regist
standardis
roprietor of
ommitment
t protectio
mutandis.
unitary eff
the Regist
European
nitary effec
will be regis
European
participati
ill not be v
7 Regulat
effect as a
and date o
surrender
eclaration
cification w
he patent p
ction.
a standard
y within the
ication in t
a licensing
rative fee a
Rule 16(1)(
h precise in
tering a lic
sation bodi
f the Europ
t, this licen
n as descr
fect (Rule
ter for unita
patent wit
ct. More pa
stered. In a
patent with
ng membe
erified by t
tion (EU) N
n object of
of effect of
is possible
of surrend
will be publi
proprietor w
d essential
e standard
the Registe
g commitm
and takes p
(k)). Additio
nformation
ensing com
es.
pean paten
nce can be
ribed abov
16(1)(n)
ary patent
th unitary e
articularly, t
accordance
h unitary e
er states.
the EPO. A
No 1257/20
f property,
a surrende
e. Accordin
er, be it a
ished by th
would 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/10/14
141320004
VI. D


Fo 21.
eq
en
un
th
P
In 22.
im
pa
th
to
am
Th 23.
to
in
de
lig
lim


e
elegation
or the sake
quivalent to
ntries addit
nitary pate
he entries r
resident of
n the intere
mprove and
art, i.e. the
he evolving
o ask the S
mend the R
his is also
o add entrie
nstance to a
espatch of
ght after th
mitation or
clause fo
e of efficien
o Rule 143
tional to th
ent protectio
referred to
f the EPO.
est of good
d upgrade
e Register f
g needs of
Select Com
Rules relat
the ratio o
es to the E
add via a d
f a supplem
e Europea
revocation

or addition
ncy, a para
3(2) EPC a
hose referr
on (see als
in paragra

patent info
the Europe
for unitary
its users. I
mmittee for
ting to unit
of Rule 143
European P
decision so
mentary Eu
an search r
n of the Eu
nal Registe
agraph 2 is
allowing the
red to in pa
so Article 1
aph 1 may
ormation p
ean Paten
patent pro
It would mo
each and
ary patent
3(2) EPC w
Patent Reg
ome proce
uropean se
report was
uropean pa
er entries
s proposed
e Presiden
aragraph 1
16(1)(b) CP
not be am
policy, ther
t Register
otection, so
oreover be
every mino
protection
which gives
gister. The
dural occu
earch repor
drawn up,
atent.

d which lay
nt of the EP
1 be made
PC 1989).
ended nor
e is a need
including i
o as to ada
e burdenso
or addition
n.
s the Presid
President
urrences su
rt, new doc
, or the dat
ys down a
PO to decid
in the Reg
This implie
r deleted b
d to consta
ts future s
apt the Reg
ome and in
al Registe
dent the po
decided fo
uch as the
cuments co
te 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) Th
sp
R
P

(2) Th
pa
C
in
e
P R II
E
P
he Europe
pecial part
Rules, the C
atent Offic
he Official
art, notices
ommittee o
nformation

PUBLICAT
European
Patent Offi
ean Patent
, the partic
Chairperso
ce.
J ournal re
s and infor
or by the P
relevant to
TIONS
Patent Bu
ice
Bulletin re
culars the p
n of the Se
eferred to in
mation of a
President o
o the imple
ulletin and
eferred to in
publication
elect Comm
n Article 12
a general c
of the Euro
ementation

Official J
n Article 12
of which i
mittee or th
29(b) EPC
character i
opean Pate
of unitary
ournal of
29(a) EPC
s prescribe
he Preside
shall cont
ssued by t
ent Office, a
patent pro
the Europ
shall cont
ed by the p
ent of the E
tain, as a s
the Select
as well as
otection.
61/84
pean
tain, as a
present
European
special
any other
4

SC/10/14
141320004
Rule 17

A 1.
Pa
th
C
O 2.
ru
th
pr
w
pa
ch
S 3.
pe
de

e
Europea
rticle 129(a
atent Bulle
he EPC, the
ommittee o
Obviously, n
ules. Thus,
hat referenc
resent rule
well as data
atent prote
hapter for u
ince the Se
ertaining to
edicated ch
n Patent B
a) EPC pro
etin contain
e Impleme
or the Pres
no referenc
a special
ce and the
es in the Eu
a laid down
ection and
unitary pat
elect Com
o unitary pa
hapter of t
Bulletin an
ovides that
ning the pa
enting Regu
sident of th
ce is prese
provision a
ereby ensu
uropean Pa
n in Rule 14
for file insp
tent entries
mittee and
atent prote
he EPO's O
nd Official
t the EPO w
articulars th
ulations to
he EPO.
ently made
appears ne
re publicat
atent Bulle
43 EPC). A
pection, it w
s in the Eu
d the Presid
ection the r
Official J ou
l Journal o
will period
he publicat
the EPC,
e in Article
ecessary w
tion of all p
etin (which
As is the ca
would mak
ropean Pa
dent of the
relevant te
urnal.
of the EPO
ically publi
tion of whic
the Chairp
129(a) EP
which woul
particulars
contains b
ase for the
ke sense to
atent Bullet
e EPO will t
xts will be
O
ish a Europ
ch is presc
person of th
C to the pr
d expressl
set out in t
bibliograph
e Register f
o have a de
tin.
take decis
published
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/10/14
141320004
Rule 18

O 1.
ap
to
A
U 2.
R
m
re
fo
be
It 3.
P
el
pa
be

e
Publicati
Over a trans
pplication o
o be submit
rticle 6 of s
nder Articl
Regulation (
meaning of
eferred to in
or unitary e
e for inform
is propose
resident of
ectronic pu
art of the fi
e inspected
ion of tran
sitional per
of Regulat
tted togeth
said regula
e 6(2) Reg
(EU) No 12
Article 143
n paragrap
effect is file
mation purp
ed that the
f the EPO
ublication.
ile relating
d online by
nslations
riod of a m
ion (EU) N
her with tra
ation.
gulation (E
257/2012,
3 EPC, giv
ph 1 as soo
ed. The tex
poses only
translation
will be em
This may
to the Eur
y the public
maximum of
No 1260/20
anslations o
U) No 126
the partici
e the EPO
on as poss
xt of such tr
y.
ns should b
powered to
consist of
ropean pat
c.
f 12 years
012, a requ
of the spec
60/2012, in
pating mem
O the task o
sible after t
ranslations
be publishe
o select an
including t
tent with un
starting fro
uest for uni
cification in
accordanc
mber state
of publishin
the date on
s will have
ed in elect
n appropria
the transla
nitary effec
om the dat
tary effect
n accordan
ce with Art
es will, with
ng the tran
n which a r
no legal va
tronic form
ate form fo
ations in the
ct, 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/10/14
141320004
Rule 19

In 1.
in
w
R 2.
de
de
br
Ba
th
R
Fo 3.
w
it
pa
Th
un
E
N 4.
E
E
C
Ac 5.
in
of
pa
Th 6.
th
to
E
e
Inclusion
n order to in
ncluded in t
will be open
Rule 19 is w
ecision rela
ecisions re
rought und
ased on th
he EPO in a
Rules of pro
or instance
where the C
will send a
atent, to th
he EPO wi
nitary effec
uropean p
o separate
uropean p
uropean p
ourt (see A
ccording to
n a final dec
f the decisi
atent office
he EPO wi
he files rela
o file inspec
uropean p
n of decisi
nform the p
the files re
n to file insp
worded as a
ating to the
eferred to in
der in Articl
his framewo
accordanc
ocedure of
e, Article 6
Court, in a f
a copy of th
he national
ill include s
ct and will
atent with
e specificat
atent. How
atent with
Article 65 A
o Article 65
cision, has
ion to the E
e of any co
ill then incl
ating to the
ction. The
atent with
ions of the
public, dec
lating to th
pection.
a blanket c
e European
n Rule 1 (i
le 32, para
ork, any de
ce with the
the Unified
5(5) Agree
final decisi
he decision
patent offi
said copy i
in particula
unitary eff
tion will be
wever, it is
unitary eff
Agreement
5(5) Agree
s revoked a
EPO and, w
ontracting m
lude said c
e European
EPO will n
unitary eff
e Unified
cisions take
he Europea
clause and
n patent w
.e. decisio
agraph 1(i)
ecision of t
Agreemen
d Patent C
ement on a
ion, has re
n to the EP
ice of any
in the files
ar not publ
fect is revo
e issued wh
necessary
fect is fully
t on a Unif
ment on a
a patent, e
with respe
member st
copy of the
n patent wi
not publish
fect is revo
Patent Co
en by the U
an patent w
d allows inc
with unitary
ns handed
, Agreeme
the Court c
nt on a Uni
Court.
a Unified P
evoked a pa
PO and, wi
contracting
relating to
ish a new
oked partly.
here unitar
y to inform
or partly re
ied Patent
Unified Pa
either entire
ect to a Eur
ate concer
e decision f
th unitary e
a new spe
oked partly.
ourt in the
Unified Pat
with unitary
clusion in t
effect, inc
d down by t
ent on a Un
can be incl
fied Paten
Patent Cour
atent, eithe
th respect
g member
o the Europ
specificatio
.
ry effect is
the public
evoked by
Court
atent Cour
ely or partly
ropean pat
rned.
forwarded
effect whe
ecification
.
files
tent Court
y effect, wh
the files of
luding thos
the Court i
nified Paten
luded in th
nt Court an
rt sets out
er entirely
to a Europ
state conc
pean paten
on where t
attributed
in case th
the Unifie
rt, where th
y, it will se
tent, to the
to it by the
re it shall b
where 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/10/14
141320004
Rule 20

I. G

R 1.
w
ca
cl
E
th
R
co
R
as
en
(s
Th 2.
pr
re
ac
re
Ad
au
ne
O 3.
to
pa
ai
re

e
Common
General
Regulation (
within the m
arried out i
arity and d
PC are of
he procedu
Regulations
orresponds
Regulations
spects of th
numerated
see for exa
he legislati
rovisions a
elated prac
cquainted w
eference en
dministrati
utomaticall
ecessitatin
Only in exce
o the needs
articular th
m of the R
equesting u
n provisio
(EU) No 12
meaning of
n accorda
definitenes
relevance
ural rules o
s) that appl
s to the leg
s to the CP
he tasks e
d in Rule 20
ample Rule
ive techniq
allows auto
ctice. It the
with the cla
nsures tha
ve Counci
ly be applic
ng an adop
eptional ca
s of the pro
e case for
Regulation
unitary effe

ns govern
257/2012 s
Article 143
nce with th
s, i.e. lega
in the pres
f the EPC
y for the p
gislative tec
PC 1989). A
ntrusted to
0 and thos
e 13(6) refe
que chosen
omatic and
reby provid
assical EP
at wheneve
l so as to i
cable for th
ption by the
ases have s
ocedures r
all the tim
which is to
ect reasona
ning proce
sets out tha
3 EPC, giv
he "interna
al certainty,
sent contex
(both from
urpose of
chnique us
As a result
o the EPO
se referred
erring to Ru
n, i.e. a dyn
full alignm
des legal c
PO procedu
er EPC pro
mprove th
he purpose
e Select Co
some EPC
relating to u
e limits wh
o keep the
ably short f
edure
at the part
e the EPO
l rules" of t
, and since
xt, it is pro
m the Conve
the presen
sed in Rule
, with resp
under Rul
to in some
ule 51(4) a
namic refe
ment to the
certainty an
ures. In ter
ocedural ru
e EPO pro
e of the pre
ommittee.
C-provision
unitary pat
hich have b
overall du
for the sak
icipating m
O some add
the EPO. F
e not all pro
posed that
ention and
nt rules be
e 31 Implem
ect to the p
e 1, only th
e other of t
and (5) EPC
erence to th
current EP
nd clarity fo
rms of legis
les are bei
ocedures, t
esent Rule
s been rew
tent protec
been kept s
ration of th
ke of legal
member sta
ditional tas
For the sak
ocedural ru
t a exhaus
d the Imple
provided (
menting
purely proc
he EPC-pr
the presen
C) will app
he relevan
PO proced
or the user
slation, the
ing amend
these chan
es without
worded and
ction. This i
short in lin
he procedu
certainty.
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/10/14
141320004
Th 4.
po
re
fil
ex
pr
ap
Ag
av
ce
It 5.
to
un
E
Ac
A
co
II. La

A 6.
E
as
in
an
of
R
fir
As 7.
E
fo
pr
w

e
he applica
owers to th
espect to th
e to be exc
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anguage R
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(EU) No 12
y of the thr
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utatis muta
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uages of t
70/84
ion of
ple, with
ts of the
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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/10/14
141320004
In 8.
ef
ad
ar
R
re
tra
E
re
re
III. Fi
D 9.
an
op
in
re
Fo 10.
m
E
m
m
As 11.
th
IV. R
It 12.
R
un
pr
ex
an
th

e
n order to a
ffect, the E
dmissible n
re not appl
Rule 6(2) EP
e-establish
anslation w
PC). In pra
equests for
ectify a def
ile inspect
ocuments
ny docume
pen to pub
n the existin
esulting Eu
or that pur
mutandis to
uropean p
modalities a
mutatis mut
s regards t
hat Rule 14
Representa
is propose
Rules 151 to
naltered EP
rofessiona
xplained un
nd 134 EP
he 25 mem
avoid delay
EPC provis
non-EPO la
licable (Art
PC). As a
ment of rig
within a mo
actice, how
r re-establi
ficiency wit
tion and c
relating to
ent relating
blic file insp
ng electron
uropean pa
pose, it is
European
atent with
and restrict
tandis.
the constit
47 EPC sho
ation
ed that Arti
o 153 EPC
PO regime
l represent
nder point
PC is to be
mber states

ys in the st
ions allowi
anguage p
ticle 14(4)
result, it w
ghts in an a
onth. This i
wever, this
shment of
thin a certa
constitutio
o the proce
g to the Eu
pection. It i
nic file rela
atent.
proposed t
n patents w
unitary eff
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tution, main
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cles 133 a
C apply mu
e applies, e
tatives whi
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participati
traightforwa
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EPC; Rule
ill for insta
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rights or re
ain period.
on, mainte
dure for th
ropean pa
s therefore
ting to the
that Article
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fect could b
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ntenance a
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utatis muta
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e non-EPO
ast to the p
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eplying to

enance an
he registrat
tent with u
e proposed
European
e 128(4) EP
y effect. As
be inspecte
les 144 to
and preser
mutandis.
aragraphs 1
ndis. In oth
some prov
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Contracting
ning the EP
anced coop
dure for req
filed within
ation is file
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language
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rvation of fi
1, 5 and 8
her words,
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peration (s
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almost the
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ent contex
sed in Artic
cting State
see Rule 20
72/84
nitary
mit in an
month
and
quest for
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d by the
comes to
e EPO to
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as well as
e to be
be created
and 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/10/14
141320004
Th 13.
is
pu
a
ha
re
pr
of

V. O

Pa 14.
(n
Th
ex
As 15.
m
du
R
pr
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th
pr
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fro
Fu 16.
w
la
th
m
ef

e
his means
not subjec
urpose of f
European
ave its plac
epresented
roceedings
f filing of th
Oral procee
art VII, Ch
notifications
he fundam
xplanations
s regards t
mutandis. F
uration of t
Regulation (
roposed: R
minimum pe
he procedu
rocedure in
equirement
om the req
urthermore
with the prov
ater than on
he one-mon
main docum
ffect and th
that for ex
ct to comp
filing a req
patent wit
ce of busin
d by a profe
s regarding
he request
edings an
apters III (
s) of the Im
mental right
s there.
the calcula
or the purp
the proced
(EU) No 12
Rule 20(4)
eriod to one
ure for requ
nsofar as it
ts. It does
quester wh
e, the conte
viso that th
ne month a
nth period
ments to be
he translat
xample a S
ulsory repr
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th unitary e
ness in an
essional re
g the Europ
for unitary
d taking o
oral proce
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pose of leg
ure for req
257/2012,
takes over
e month in
uesting uni
t exclusive
in particula
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ent of Rule
he docume
after expiry
for filing th
e filed with
ions.
Spanish firm
resentation
nitary effec
effect. Whe
EPC Cont
epresentati
pean paten
y effect.
of evidenc
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ng Regulat
oceedings
riods time
gal certaint
questing un
some mod
r the subst
nstead of tw
tary effect
ely relates t
ar not requ
justify long
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m having it
n by a prof
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ive and act
nt with unit
ce, notifica
d taking of
tions to the
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ty, and in o
nitary effec
difications t
ance of Ru
wo. The re
significant
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ger periods
PC is set o
d to therein
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for unitary
will in fact b
ts place of
fessional re
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person do
ate, it will n
t through h
tary effect,
ations, tim
evidence)
e EPC app
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e 131 EPC
order to ke
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to the perio
ule 132 EP
ason for th
tly differs f
ment of pu
eparation o
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out separat
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f business
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need to be
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ly mutatis
ule 21, see
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ve been rec
to be in lin
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74/84
in Spain
tive for the
regarding
er not
for the act
mutandis.
the
mutatis
erall
n line with
EPC are
rtens the
ning is that
atent grant
al
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/10/14
141320004
Rule 21

In 1.
or
th
ex
Pa
it
H 2.
un
pr
fo
un
Pa
ca
is
pr
Th 3.
po
th
as
to
m
m
ru
ef
su
pr
fo
an
O 4.
re
w
by
pa
e
Oral proc
n accordan
ral proceed
he instance
xpedient o
atent Prote
where the
owever, in
nder which
roceedings
or unitary e
nitary effec
atent Prote
ases where
sues relev
roceedings
he procedu
ossible for
he proprieto
s a rule co
o duly prep
months not
mutatis mut
ule, make a
ffect, This w
ummons to
roceedings
ormal defec
nd simple i
Oral procee
e-establish
with regard
y this restr
aragraph 1
ceedings
ce with Art
dings, para
e of the Un
r at the req
ection Divis
parties an
n the intere
h oral proce
s should be
effect. Thus
ct will norm
ection Divis
e face-to-fa
vant to the
s to be exp
ure for reg
reasons o
or where th
nsiderably
pare oral pr
ice of the s
andis (see
an auxiliary
would also
o be issued
s would mo
cts can usu
in the majo
edings with
ment of rig
to the time
iction and
1.
ticle 116(1
agraph 1 p
itary Paten
quest of an
sion may r
nd the subj
est of proce
eedings ar
e expressly
s, oral proc
mally be ex
sion consid
ace dialog
registratio
pedient.
istering un
of legal cert
he EPO int
y delay the
roceedings
summons
e Rule 20(2
y request f
o be very c
d, translatio
oreover no
ually not be
ority of cas
respect to
ghts with re
e limit for fi
are to be h
) EPC whi
rovides tha
nt Protectio
ny party to
reject a req
ect of the
edural econ
re to be he
y restricted
ceedings in
xcluded and
ders this to
ue is likely
n of unitary
nitary effec
tainty. Hold
tends to re
whole pro
s (proprieto
according
2)(e)). Sinc
for oral pro
cost-intensi
ons to be p
ot produce
e removed
ses (see R
o other pro
egard to th
ling the req
held on req
ch enshrin
at oral proc
on Division
the procee
quest for fu
proceeding
nomy, it is
eld upon re
d in procee
n proceedi
d should ta
o be exped
y to result i
y effect wil
t should be
ding oral p
efuse the re
oceedings b
or to be su
to Rule 11
ce patentee
oceedings w
ive (comm
provided, m
any furthe
d and the le
ules 5 and
cedures, s
e time limi
quest for u
quest in ac
nes the fun
ceedings t
n if it consid
edings. Ho
urther oral
gs are the
proposed
quest of an
edings con
ngs conce
ake place o
dient. Only
n a speedi
ll the EPO
e kept as e
proceeding
equest for
because th
mmoned w
5(1) EPC
es would p
when requ
unication a
minutes to
r clarity, be
egal situati
6).
such as the
t for payin
unitary effe
ccordance
ndamental
ake place
ders this to
owever, the
proceeding
same.
that the pr
ny party to
cerning the
erning the r
only if the U
in excepti
ier resoluti
deem ora
expeditious
s at the re
unitary eff
he EPO wo
with at leas
which app
presumably
uesting unit
accompan
be taken).
ecause the
ion will be
e procedur
g renewal
ect, are una
with propo
76/84
right to
either at
o be
e Unitary
gs before
rinciple
o the
e request
request for
Unified
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--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/10/14
141320004
Rule 22

It 1.
re
in
ed
go
w
ha
A 2.
re
th
sa
re
sp
fo
om
w
Th 3.
th
R
du
cl
th
le
re
co
Fo 4.
fro
m

e
Re-estab
is propose
edress for a
ncluding the
ditorial con
overning re
would be un
as been fo
typical cas
enewal fee
he proprieto
aid request
e-establish
pecified in
or re-establ
mitted act,
within this tw
he special
he fact that
Regulation (
uration for
arification
he patentee
egal regime
e-establish
onjunction
or the sam
om re-esta
month perio
blishment
ed that re-e
all the proc
e procedur
nstraints, a
e-establish
nclear and
ormulated.
se giving r
s in time fo
or of the E
t too late, i
ment of rig
Rule 6(1).
lishment s
i.e. the fili
wo-month
period of t
t the proce
(EU) No 12
reasons o
of the lega
e can eithe
e via nation
ment of rig
with Rule
me reason,
ablishment
od for rectif
of rights
establishm
cedures re
re for requ
a cross refe
hment of rig
too difficul
rise to re-e
or the Euro
uropean p
it is propos
ghts in resp
It is furthe
hould be fi
ng of the r
period.
two month
dure for re
257/2012,
of legal cert
al situation
er opt for a
nal validati
ghts in the
136 EPC))
- i.e. keep
t of rights th
fying forma
ment of righ
lating to th
esting unit
erence to th
ghts and it
lt to read. T
stablishme
opean pate
atent omit
sed that he
pect of the
ermore pro
iled within
request for
s instead o
equesting u
an expedit
tainty. The
in the stat
European
ons (see a
priority pe
).
ing the pro
he period r
al deficienc
ts as the o
he Europea
tary effect,
he numero
s interactio
Therefore,
ent of rights
ent with un
to file a re
e should be
non-exten
oposed that
two month
unitary eff
of the usua
unitary effe
tious proce
e prevailing
te of uncer
n patent wit
also the sp
riod under
ocedure sh
referred to
cies in the
only applica
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should be
ous differen
on with furt
a new all-
s will be th
itary effect
equest for u
e able to o
ndable one
t in such a
hs of expiry
fect, must
al one-year
ect should
edure with
g interest is
rtainty follo
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ecial perio
r Article 87
hort - it is p
in Rule 7(
request fo
able mean
with unitary
e introduce
nt EPC pro
ther proces
-inclusive p
he failure to
t. In additio
unitary effe
btain
e-month pe
a case, the
y of that pe
also be co
r-period is
be, in line
a short ov
s therefore
owing gran
effect or a
od provided
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proposed to
(3) (i.e. the
r 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/10/14
141320004
Rule 23

P 1.
vi
U



e
Form of d
roposed R
ew of the f
nified Pate
decisions
Rule 23 rep
fact that ac
ent Court.
s
produces R
ctions agai
Rule 111(2)
inst EPO d
) EPC with
decisions a
h some ada
are to be br
aptations re
rought 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/10/14
141320004
Rule 24

P 1.
w
of
Ac 2.
A
Pa
th
to
Th 3.
de
fo
U
th
P 4.
on
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Interlocu
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with Rule 91
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ctions con
rticle 9 Re
atent Cour
he decision
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eficiencies
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ne month f
RoP is quite
ystem, the
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see Rule 4(
uarantee th
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cerning de
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PO (see Ru
cision of the
an admiss
plicable). I
under Rule
e month fr
n and to inf
rrors this pr
e rectificati
nterlocutor
ds more tim
the period
proposal de
ning decisio
(EU) No 1
before the
without a po
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hich will en
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4


SC/10/14 e 83/84
141320004
PART V FINANCIAL ISSUES
Rule 25 Cover for expenditure incurred by the European Patent Office
1

(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 EPOs Financial
Regulations.









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

SC/10/14
141320004
Rule 25

Ac 1.
E
im
Pa 2.
th

e
Cover fo
ccording to
uropean p
mplemente
aragraph 2
he initial ph
r expendit
o Article 14
atent with
d in a way
2 is intende
hase.
ture incur
46 EPC an
unitary eff
y that ensur
ed to deal
rred by the
nd Article 1
fect has to
res budget
in particula
e Europea
0 ff Regula
be self-fin
t neutrality
ar with the
an Patent O
ation (EU)
ancing and
y.
situation w
Office
No 1257/2
d has to be
which migh
84/84
2012 the
e
ht occur in
4