One of the many challenges the UPC faces and which is currently the subject of questions and debates is the impact of the ratification of the European Patent Convention by member states on the UPC Agreement, or what is commonly called “the Malta problem”. The UPC Blog would like here to introduce the main elements of the debate and open the topic to discussion.
The European Patent Convention was signed on 5 October 1973 and entered into force in 1977 for seven countries (Belgium, Germany, France, Luxembourg, Switzerland, Netherland and the United Kingdom). Malta on the contrary is a late-comer to the European Patent Convention and only joined on 1 March 2007, which means that European patent applications filed before 1 March 2007 are not valid in Malta by virtue of Article 79 (1) EPC. However, assuming that Malta ratifies the Unified Patent Court Agreement, its late ratification of the EPC will have direct consequences for the Unitary Patent at the scale of Europe.
Article 3(1) of regulation 1257/2012 requires in fact for the unitary effect “a European Patent granted with the same set of claims in respect of all the participating Member States”. The same article further states that “a European Patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect.” Malta having been a member of the EPC since only 1 March 2007, any European Patent application filed before that date will not get a grant valid for Malta. Hence the granted European Patent will not have the same set of claims in all participating member states, since it would have a valid claim set for some states and no set at all for Malta.
This situation of course seems absurd: assuming that Malta ratifies the Agreement in a timely fashion it would appear that no European patent application filed before 1 March 2007 could be eligible to become a Unitary Patent.
One could argue that this is not really a problem since it will resolve itself. In fact, most applications will at some point have a filing date situated after 1 March 2007, and will thus be eligible. However, this problem will not in the future be limited to Malta. In fact what about new and future EU members? As for example Croatia, which joined the EU on 1 July 2013 and joined the EPC as recently as 1 January 2008, after being an extension state from 1 April 2004. As an EU member, Croatia is now able to opt in to the Unitary Patent package. So, if Croatia ratifies the Agreement, the same problem will apply, except that the cut-off date will now be 1 January 2008.
Other recent EPC-joiners that aren’t yet EU members are Norway (EPC since 1 January 2008), Albania (EPC since 1 May 2010), Macedonia (EPC since 1 January 2009), Serbia (EPC since 1 October 2010), and San Marino (EPC since 1 July 2009). Any of these joining the EU in the near future, and becoming Member States of the unitary patent, would shift the cut-off date even later.
It thus seems to the UPC Blog that the Unified Patent Court will have to decide between three possible interpretations of article 3 (1) of regulation 1257/2012.
The first interpretation would be a literal interpretation of article 3 (1) which would have for consequence that no European Patent with Unitary effect could be delivered for European Patents granted before 2007. This interpretation seems of course to be very unlikely.
The second interpretation would consider that if a European patent is not available in a country, the Unified Patent Court should then ignore that country rather than disqualify the Unitary Patent. The requirement of a European Patent “granted with the same set of claims in respect of all the participating Member States” could hence be read as follows: in all participating Member States for which the patent is granted, it should have the same claims. But if the patent is not granted in a particular member state at all, the only effect is that it will not be included in the unitary effect. To a certain extent this will happen anyway. In fact, not all member states will ratify the UPC Agreement at the same time. So a European Patent with Unitary Effect obtained a few years after the Unified Patent Court Agreement enters into force will very probably concern more countries than a European Patent with Unitary Effect granted early 2015 (assuming that the UPC Agreement comes into force in early 2015 as planned by the UPC preparatory committee).
Finally, the third interpretation of article 3 (1) would require the Court to ignore the date of entry into force of the European Patent Convention. This interpretation would mean that a European Patent which could not have been filed for Malta before 2007 could get unitary effect on the basis of a European Patent with Unitary Effect much older than 2007. This situation would however affect third parties who may have relied on the fact that Malta was not covered by a European Patent before 2007.
The UPC Blog awaits your thoughts, comments and questions on the “Malta problem”.