UPC: EPO decision not to delay registration of Unitary Effect reversed - but refund of Court fees denied

In June 2024, the EPO notified patent applicants that, in light of Romania’s ratification of the UPCA, it will, upon request, allow delayed registration of unitary effect of a European patent until after 1 September 2024, so that a newly granted Unitary Patent would also cover Romania.  The only limitation to this offer was that the request for delay of registration was to be submitted alongside the request for unitary effect. 

A patent proprietor filed a request for unitary effect on July 3, 2024 but filed the request for delay two days later, on July 5. As a consequence, the EPO refused to delay registration and registered the unitary effect on July 10. As a consequence, the resulting Unitary Patent did not cover Romania. 

In response, Qualcomm applied to the UPC’s Paris Central Division to annul the EPO’s decision not to delay registration. On August 19, the EPO revised its stance, setting aside its earlier decision and re-registeried the Unitary Patent on September 5, thereby covering Romania. Following this, the UPC closed Qualcomm’s action, acknowledging the EPO's rectification.

Qualcomm’s subsequent application for reimbursement of the UPC Court fees under Rule 370 was, however, denied by the Court on the basis that grant of a request for reimbursement is discretionary and must be based on a reasoned statement, providing specific justifications why reimbursement is warranted. 

Whilst Qualcomm ultimately succeeded, this case nevertheless clearly highlights the importance of adhering to procedural requirements when navigating the Unitary Patent system, as well as the discretion exercised by the UPC in determining fee reimbursements.

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