As part of the package of measures introduced to bring the Unified Patent Court (UPC) and Unitary Patent (UP) into effect, the European Patent Office (EPO) has been entrusted with a number of administrative tasks relating to Unitary Patents, including administering requests for UPs and ensuring that such requests are submitted in the correct language and within the correct time period.

To provide a route for challenging decisions made by the EPO in carrying out the allocated tasks, the UPC Agreement gives the Unified Patent Court exclusive competence in respect of actions concerning decisions of the EPO in carrying out these tasks. Consequently, a decision of the EPO in relation to a Unitary Patent can only be challenged in the UPC, and not at the EPO itself.

It should be noted that the UPC's jurisdiction extends only to decisions of the EPO in relation to the administrative tasks relating to UPs that have been assigned to the EPO. The UPC therefore does not provide an additional or alternative forum for challenging decisions taken by the EPO in examination, opposition or appeal proceedings relating to European patent applications.

Challenging an EPO decision to reject a request for unitary effect

The EPO decision that is perhaps most likely to give rise to a challenge at the UPC is a decision to reject a request for unitary effect – i.e. a decision by the EPO not to grant a UP. The mechanism for challenging such a decision is an application to annul the EPO's decision. These applications are governed by Rule 97 of the Rules of Procedure of the UPC.

An application to annul a decision of the EPO to reject a request for unitary effect must be lodged at the UPC Registry by the patent proprietor within three weeks of service of the decision of the EPO. The application must include, among other things, name and address details of the claimant (i.e. the patent proprietor) and (where applicable) the claimant's representative, a reference to the EPO decision being challenged, details of the grounds for annulling the EPO decision, and the facts, arguments and evidence relied on. A court fee (currently €1,000) must also be paid to the UPC.

Once lodged, an application to annul a decision of the EPO to reject a request for unitary effect has suspensive effect, meaning that the decision to reject the request for unitary effect will not take effect while the action (and any subsequent appeal) is pending.

On receipt of the application, the Registry will forward the application to the standing judge, who will decide the application within three weeks of the date of receipt of the application.

Any appeal by the patent proprietor or EPO against the decision on the application must be lodged at the Registry within three weeks of service of the decision, and the relevant appeal fee (currently €1,000) must be paid. The appeal will be forwarded to the standing judge of the UPC Court of Appeal, who will decide the appeal within three weeks of receipt of the appeal by the Registry.

The entire procedure for challenging a decision of the EPO to reject a request for unitary effect, including any appeal, should therefore be concluded within 12 weeks of the service of the EPO decision.

This expedited timetable provides rapid legal certainty for third parties as to the geographical extent of the protection afforded by a European patent.

Most of the states that participate in the Unitary Patent system have implemented (or plan to implement) "safety net" provisions, to allow the proprietor of a European patent for which a request for unitary effect has been refused to validate their European patent as a national patent instead.

Thus, even if proceedings before the UPC to annul an EPO decision to reject a request for unitary effect are not finally concluded before the usual deadline for validating the European patent nationally, it will still be possible to obtain national validations in many countries if the decision to reject the request for unitary effect is ultimately upheld.

Challenging other EPO decisions relating to Unitary Patents

The mechanism for challenging other decisions of the EPO in relation to UPs is an application to annul or alter a decision of the EPO. These applications are governed by Rule 88 of the Rules of Procedure.

An application to annul or alter a decision of the EPO must be lodged at the UPC Registry by the claimant within two months of service of the decision of the EPO. The application must include, among other things, name and address details of the claimant and (where applicable) the claimant's representative, an explanation and evidence that the claimant is adversely affected by EPO decision and is entitled to start proceedings, a reference to the EPO decision being challenged, an indication of the order or remedy sought by the claimant, details of the grounds for annulling or altering the EPO decision, and the facts, arguments and evidence relied on. A court fee (currently €1,000) must also be paid to the UPC.

Again, once lodged, such an action has suspensive effect, meaning that the decision being challenged will not take effect while the action is pending.

On receipt of the application, the Registry will examine whether it is admissible and, if so, will forward the application to the EPO. If the EPO considers the application to be well founded, it will rectify the decision in accordance with the order or remedy sought by the claimant within two months of receipt of the application, and will inform the UPC that the decision has been rectified. In this case, the UPC may order the full or partial reimbursement of the court fee paid by the claimant to the UPC.

If the EPO declines to rectify the decision, the action will be assigned to the central division of the UPC to be decided. The action may be assigned to a single judge, if requested by the claimant.

The judge-rapporteur charged with managing the proceedings may invite the claimant to lodge further written pleadings, and may invite the EPO to comment in writing on any question raised by the proceedings. An oral hearing may be requested by the claimant, or may be convened by the judge rapporteur of their own accord.

The UPC will endeavour to give a final decision on the action within six weeks of the oral hearing. If no oral hearing is convened, a final decision will be taken on the basis of the written pleadings. An appeal against the final decision may be lodged within 15 days of service of the final decision.

Grounds for annulling or altering a decision of the EPO

The grounds for annulling or altering a decision of the EPO are set out in Rule 87 of the Rules of Procedure, as follows:

(a) infringement of Regulation (EU) No 1257/2012 or of Regulation (EU) No 1260/2012 or of any rule of law relating to their application;

(b) infringement of any of the implementing rules of the European Patent Office for carrying out the tasks referred to in Article 9(1) of Regulation (EU) No 1257/2012;

(c) infringement of an essential procedural requirement;

(d) misuse of power.

It seems likely that most actions to annul or alter a decision of the EPO will be based on grounds (a) – (c) above.

How HLK can help

With almost 40 European Patent Attorneys who are qualified to act before the UPC, HLK is well placed to help clients with challenges to decisions of the EPO in relation to UPs at the UPC.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.