1. Key takeaways
The UPC applies EU law when reviewing EPO decisions, ensuring EU legal guarantees are respected in the administrative procedure (Art. 1(2), Art. 20 UPCA)
The EPO rejected the application for unitary effect because the patent had not been granted for all participating Member States at the time of grant and of the request for unitary effect. In this case, Malta was not designated for the underlying applications because it had not yet acceded to the EPC when the parent (and earlier) applications were filed and therefore could not be included in the territorial scope. Against this decision of the EPA an application according to R. 97 RoP was filed.
The Court left open whether the EPO is directly bound by EU law (the fact that it is no "court of a member state" according to Art. 267 AEUV speaks against it). However, the Court stresses that the UPC's own comprehensive judicial review ensures that administrative actions of the EPO in the unitary patent system are ultimately subject to EU law supremacy (mns. 22 et seqq.). The Court confirmed the EPO respected good administration principles (Art. 41 CFR), as the applicant was heard and the decision was sufficiently reasoned (mns. 28 et seqq.).
Unitary effect is tied to the patent grant for all participating states at the time of the request, not the initial application filing
The Court rejected the applicant's argument that the rule should only apply to states that could have been legally designated when the original application was filed. It stressed that only such European Patents shall have unitary effect which have been granted for all participating Member States with the same set of claims, recital 7 Regulation (EU) No. 1257/2012. This strict requirement ensures the patent's "unitary character". Unlike Art. 149(1) EPC the Regulation No. 1257/2012 does not foresee that the designation of one or some participating states shall be deemed to constitute the designation of all participating states. This is an intentional legislative decision and no unintended legislative gap (mn. 38 et seqq.). The same is true for the UPP Rules (see mn. 43).
Unitary territorial protection concerns a patent's validity in all participating Member States and is independent of its actual manageability or use within those territories
The applicant's argument that the lack of grant in one state doesn't harm uniformity if the patent isn't used there was rejected, as validity is the key criterion (mn. 44).
2. Division
Central Division Paris
3. UPC number
UPC_CFI_1771/2025
4. Type of proceedings
Application to set aside a decision of the EPO (Action for review of an administrative decision)
5. Parties
Applicant: PAPST LICENSING GmbH & Co. KG
Respondent: European Patent Office
6. Patent(s)
3 327 608
7. Body of legislation / Rules
Art. 1(2) UPCA
Art. 20 UPCA
Rule 97 RoP
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