Background
On 24 June 2024, the Council of the European Union (EU) adopted its 14th package of sanctions against Russia, Council Regulation (EU) No 833/2014 as amended by Regulation (EU) 2024/1745. Article 5s(2) of said regulation provides that EU member states must use best efforts to ensure that the European Patent Office (EPO) refuses requests for unitary effect from Russian nationals, natural persons residing in Russia, or legal persons, entities or bodies established in Russia. Article 5s(5) of said regulation provides an exception for nationals or residents of EU Member States, EEA countries, or Switzerland.
Following publication of the EU’s 14th package of sanctions against Russia, the President of the EPO decided to stay proceedings for the registration of unitary effect where requests involved sanctioned individuals or entities (see the notice from the EPO dated 10 July 2024, OJ EPO 2024, A70).
Amendment to Rule 5(2) UPR
Rule 5(2) of the Unitary Patent Regulation (UPR) has so far provided that unitary effect is registered only where the European patent has been granted with the same set of claims for all the participating states.
However, Rule 5(2) of the Unitary Patent Regulation (UPR) was amended by the Select Committee of the Administrative Council in its decision of 13 November 2024. It was amended to add an express legal basis in the UPR for the EPO to register unitary effect only where the patent proprietor is not subject to the sanctions outlined in Article 5s(2) of Regulation (EU) No 833/2014 as amended by Regulation (EU) 2024/1745.
Amended Rule 5(2) UPR entered into force on 15 November 2024.
Before the EPO rejects a request for unitary effect under Rule 7(2) UPR, it will give the requesting proprietor an opportunity to comment and to invoke (where applicable) any exceptions.
Amended Rule 5(2) UPR applies to requests for unitary effect pending on the date of its entry into force and to new requests. Amended Rule 5(2) UPR will be automatically repealed on the date Article 5s(2) of Regulation (EU) No 833/2014 as amended by Regulation (EU) 2024/1745 ceases to have effect and will be replaced by Rule 5(2) UPR as in force prior to the amendment.
It is noted that registration proceedings which had been stayed in accordance with the notice from the EPO dated 10 July 2024 are to be resumed as of the date of entry into force of amended Rule 5(2) UPR. These registration proceedings are covered by amended Rule 5(2) UPR.
For more information, see the EPO website: Unitary Patent: Legal provision to implement EU sanctions against Russia | epo.org