Notice from the European Patent Office dated 10 July 2024 concerning the staying of proceedings for the registration of unitary effect as a precautionary measure due to the EU's 14th package of sanctions against Russia

 
This text is intended for publication in the Official Journal (OJ) of the EPO. It is made available in advance on the EPO website merely as a courtesy to the public. Only the text subsequently published in the officially certified PDF file of the OJ is authentic. It cannot be guaranteed that this advance version accurately replicates that text.

1. On 24 June 2024, the Council of the European Union (EU) adopted a 14th package of economic and individual restrictive measures in view of Russia's actions destabilising the situation in Ukraine. These measures are designed to target high-value sectors of the Russian economy, such as energy, finance and trade, and make it ever more difficult to circumvent EU sanctions. The package imposes restrictions on accepting applications for registration in the EU of certain intellectual property rights from Russian nationals and companies residing or established in Russia, with exceptions applying to nationals of an EU Member State, of a country member of the European Economic Area (EEA) or of Switzerland and to natural persons having a temporary or permanent residence permit in an EU Member State, in an EEA country member or in Switzerland.

2. Under Article 1(19) of Council Regulation (EU) 2024/1745 of 24 June 2024, an Article 5s is inserted into Regulation (EU) No 833/2014.

3. Paragraph 2 of this Article 5s provides that EU Member States, in their capacity as contracting states to the European Patent Convention (EPC) and in fulfilling their international obligations undertaken in the EPC, must use best efforts to ensure that the European Patent Office (EPO) refuses requests for unitary effect within the meaning of Regulation (EU) No 1257/2012 of the European Parliament and of the Council that are filed by Russian nationals or natural persons residing in Russia, or by legal persons, entities or bodies established in Russia, including if jointly filed by a Russian national or natural persons residing in Russia, legal persons, entities or bodies established in Russia with one or more non-Russian natural or legal person resident or established outside of Russia.

4. Under Article 5s(5), the above paragraph 2 does not apply to nationals of an EU Member State, of an EEA country member or of Switzerland or to natural persons having a temporary or permanent residence permit in an EU Member State, in an EEA country member or in Switzerland. 

5. The effect of Article 1(19) of Council Regulation (EU) 2024/1745 of 24 June 2024, including any necessary follow-up measures, is currently under discussion with the representatives of the EPC contracting states.

6. However, in view of its potential impact, the President of the EPO has decided under Rule 3 of the Rules relating to Unitary Patent Protection to take the precaution of staying proceedings for the registration of unitary effect in the Register for unitary patent protection ex officio where the request for unitary effect is/was filed:

- by Russian nationals or natural persons residing in Russia, or

- by legal persons, entities or bodies established in Russia,

including if jointly filed by a Russian national or natural persons residing in Russia, legal persons, entities or bodies established in Russia with one or more non-Russian natural or legal persons resident or established outside of Russia.

7. An exception applies for nationals of an EU Member State, of an EEA country member or of Switzerland and for natural persons having a temporary or permanent residence permit in an EU Member State, in an EEA country member or in Switzerland.

8. If proceedings are stayed, the EPO will inform the parties accordingly. It will also withdraw any communications setting them time limits for reacting and refrain from dispatching any other such communications until the proceedings have been resumed.

9. Those who have requested unitary effect and wish to invoke the exception under Article 5s(5) as set out in Article 1(19) of Council Regulation (EU) 2024/1745 of 24 June 2024 (see paragraphs 4 and 6 above) are required to submit any appropriate evidence to the EPO in response to its notification informing them of the stay. Where applicable, the EPO will then lift the stay of proceedings.

10. This notice applies with immediate effect to all requests where unitary effect has not yet been registered.