UPC Ruling Defines The Limits Of Unitary Patent Protection

The UPC Court of Appeal has confirmed that a European patent can only benefit from unitary effect if it covers all participating member states with an identical set of claims in each of these states. As a result, patents with a filing date before 1 March 2007 are excluded from unitary protection, as Lise Luciani explains. 

Following a refusal by the European Patent Office (EPO) to grant unitary effect to a European patent, the Unified Patent Court (UPC) was called upon to clarify whether such effect may be recognised where the European patent in question does not cover all the member states participating in the unitary system (UPC_CoA_8/2026). 

The scope of unitary patent protection 

As a reminder, the Unified Patent Court (UPC) is a common court for the 18 European Union (EU) member states that signed the Unified Patent Court Agreement (UPCA), which entered into force on 1 June 2023. Since this date, European patent applicants have been able to select the unitary patent route for these 18 signatory countries. 

The 18 countries are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia and Sweden. 

However, one of these countries – Malta – was not a party to the European patent system on theactual filing date of the European patent application in question. The filing date of the parent application (that application being a divisional application) was 31 May 2005. Malta acceded to the European Patent Convention (EPC) on 1 March 2007.  

As a result, Malta was not named in the European patent application, let alone in the granted patent. A retroactive designation of Malta was also not possible, as stated in the then Official Journal of the EPO 1/2007. 

The patent proprietor argued that the lack of full coverage should not preclude the granting of unitary effect if it resulted from circumstances beyond its control.

The question put to the Court was, therefore, whether a certain flexibility could be allowed in the application of the conditions laid down by the Regulation providing for the creation of unitary protection (Regulation (EU) No 1257/2012), with a possible territorial exclusion of unitary effect, in the present case for Malta. 

The Court of Appeal's decision 

The Court of Appeal firmly rejected this approach and confirmed the rejection of unitary effect. It adopted a strict interpretation of Article 3(1) of the above-mentioned Regulation ("A European patent granted with the same set of claims for all participating member states"), holding that unitary effect can only be granted if the European patent produces identical effects in all participating member states. This implies not only complete territorial coverage, but also the existence of a single and uniform set of claims for all these states. Any divergence, even if limited to a single state, is sufficient to exclude the benefit of the unitary scheme. 

The Court's reasoning is essentially based on a literal and systemic reading of the text. It refuses to take into consideration arguments based on the purpose of the system or the practical difficulties encountered by holders of old patents. In particular, it rules out any possibility of introducing exceptions based on historical constraints or on the material impossibility of covering certain states at the time of filing. The Court thus affirms that the unitary nature of the patent presupposes absolute uniformity, which cannot be adjusted without undermining the coherence of the system. 

The implications of the decision for European patent holders 

This decision is of considerable importance, in that it enshrines a particularly rigorous conception of the unitary patent. It confirms that the latter must be understood as an indivisible title, based on a perfect identity of protection throughout the territory concerned. It is not a simple mechanism of administrative simplification allowing national protections to be aggregated, but a genuine autonomous right, the unity of which is an essential condition for existence. 

On the one hand, the decision can be praised for the clarity and predictability it brings. By unambiguously affirming the 'all or nothing' nature of the unitary effect, the court provides a stable legal framework for economic operators. 

On the other hand, the decision has acute implications and practical consequences for many right holders, particularly those in the pharmaceutical and biotechnology sectors. Many patent portfolios, especially those relating to old molecules and/or resulting from divisional applications, are at risk of being excluded from the benefit of the unitary effect due to historical irregularities in territorial coverage. Holders will have to resort to traditional national validations, therefore, which limits the expected benefits of the unitary system in terms of simplification and cost reduction. 

In practice, this will result in successive generations of European patents with unitary effect holding different territorial scope as new member states ratify the UPCA. A similar situation could be observed for Croatia, for example, which acceded to the EPC on 1 January 2008, if the UPC were to enter into force in Croatia (which is not the case at present). 

Ultimately, the risk depends on the effective filing date of the patent and the geographical evolution of the unitary patent system. Any state that has joined the European patent or the unitary patent system late can become the "missing link" that prevents access to the unitary effect of a European patent. 

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