- in European Union
The UPC Court of Appeal has confirmed that a European patent which does not include the designation of one of the participating Member States cannot be registered for unitary patent protection (UPC_CoA_8/2026, Papst Licensing GmbH & Co. KG v European Patent Office, 9 February 2026). In particular, European patents having a filing date before Malta's accession to the EPC on 1 March 2007 are ineligible for unitary effect. This applies to divisional applications which were lodged after 1 March 2007 if the filing date of the (ultimate) parent application was before 1 March 2007. This outcome will not surprise practitioners.
The patent at issue, EP3327608, is a divisional of an earlier European application, which in turn was a divisional of a Euro-PCT application filed on 31 July 2005. EP3327608 was granted on 16 April 2025.
Malta did not accede to the EPC until 1 March 2007. Thus, Malta was not (and could not have been) designated in the original Euro-PCT application. By operation of Article 76(2) EPC, it was not possible to designate Malta in the divisional application derived from the original Euro-PCT application. This meant that the granted patent (EP3327608) covered 30 EPC Contracting States, but not Malta.
The patentee filed a request for unitary effect. This request was rejected by the EPO's Unitary Patent Protection Division, and the Paris Central Division of the UPC subsequently upheld the rejection. The patentee then appealed to the Court of Appeal.
It was common ground in the proceedings that the patent at issue did not include Malta: the patentee was effectively seeking a unitary patent with a carve-out for Malta.
Article 3(1) of Regulation (EU) No 1257/2012 ("the Regulation") imposes conditions on which European patents can benefit from unitary effect:
"A European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States provided that its unitary effect has been registered in the Register for unitary patent protection. A European patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect." (Emphasis added.)
The patentee contended that the phrase "granted with the same set of claims in respect of all the participating Member States" in Article 3(1) should be interpreted as referring only to those participating Member States which were actually "designatable" for the patent, thus excluding Malta from the "participating Member States" of Article 3(1).
The patentee also argued that unitary effect does not presuppose that the European patent will be in-force in every single participating Member State, because Article 18(2) of the Regulation has the implication that, over time, different unitary patents may have different territorial scopes as new Member States ratify the UPCA:
"By way of derogation from Articles 3(1), 3(2) and 4(1)a European patent for which unitary effect is registered in the Register for unitary patent protection shall have unitary effect only in those participating Member States in which the Unified Patent Court has exclusive jurisdiction with regard to European patents with unitary effect at the date of registration." (Emphasis added.)
The Court rejected these arguments, with the reasoning being based on the plain wording of Article 3(1). As the European patent did not designate Malta, it did not contain claims for Malta. Malta is a participating Member State, irrespective of whether or not it could have been designated. Therefore, the European patent did not have the same set of claims in respect of all the participating Member States, as required for unitary effect by Article 3(1). In the Court's view, the interpretation of Article 3(1) relied on by the patentee was contra legem.
The Court noted the absence of an indication in the preparatory works for the Regulation supporting the patentee's position regarding the interpretation of Article 3(1). The Court also held that Article 18(2) is an exemption from the general rules of Article 3(1), and so should not change the character of Article 3(1).
The patentee advanced other arguments, such as that denial of unitary effect amounted to unjustified unequal treatment between patent proprietors based solely on historical filing date, contrary to Article 17(2) of the EU Charter of Fundamental Rights, and that the Court should perform a proportionality assessment. None of these arguments were considered by the Court to be convincing.
The patentee also requested the referral of several questions to the CJEU for a preliminary ruling. The request was rejected because the questions were considered irrelevant, mainly because the outcome of the proceedings was based on a literal reading of Article 3(1).
Accordingly, it has been confirmed by the UPC's Court of Appeal that Unitary Patents will not be available if a European patent application has a filing date before 1 March 2007. Based on the Court of Appeal's reasoning, it is also not possible to obtain a Unitary Patent from later-filed European patent applications if a designation of a UPC participating state has been withdrawn. A Unitary Patent can only be granted for all UPC participating states.
J A Kemp LLP acts for clients in the USA, Europe and globally, advising on UK and European patent practice and representing them before the European Patent Office, UKIPO and Unified Patent Court. We have in-depth expertise in a wide range of technologies, including Biotech and Life Sciences, Pharmaceuticals, Software and IT, Chemistry, Electronics and Engineering and many others. See our website to find out more.
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.
