Rule 97 – Application to annul a decision of the Office to reject a request for unitary effect

1. The proprietor of a patent whose request for unitary effect has been rejected by the Office shall lodge an Application at the Registry in accordance with Article 7(2) of the Agreement and Annex II thereto, to reverse the decision of the Office, in the language in which the patent was granted, within three weeks of service of the decision of the European Patent Office.

2. The Application shall contain particulars in accordance with Rule 88.2(a), (c), (d) and (g) to (j) and the proprietor shall pay the fee for the action against the decision of the Office in accordance with Part 6. Rule 15.2 and Rule 89 shall apply mutatis mutandis.

3. If the requirements referred to in paragraph 2 have been complied with, Rule 90 shall apply mutatis mutandis.

4. The Registry shall as soon as practicable forward the Application to the standing judge who may invite the President of the European Patent Office to comment on the Application, but shall in any event decide the Application within three weeks of the date of receipt of the Application.

5. A Statement of appeal by the proprietor of the patent or the President of the European Patent Office against the decisions of the standing judge pursuant to paragraph 4 may be lodged within three weeks of service of the said decision. The Statement of appeal shall contain the particulars previously lodged pursuant to paragraph 2 and also the reasons for setting aside the contested decision. The appellant shall pay the fee for the appeal in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis. If the requirements of this paragraph 5 have been complied with, the Registry shall record the appeal in accordance with Rule 230.1 and shall as soon as practicable assign the appeal to the standing judge of the Court of Appeal [Rule 345.5 and 345.8] who may invite the other party to comment on the appeal but shall in any event decide the appeal within three weeks of receipt by the Registry of the Statement of appeal.

6. The Registry shall as soon as practicable notify the Office of the decision on the Application or on the appeal as the case may be.

Case Law

Court of Appeal

IPPT20260209, UPC CoA, PAPST Licensing v EPO
Request to grant unitary effect denied (R. 97 RoP). Article 3(1) of Regulation 1257/2012 cannot be interpreted to allow registration of unitary effect for a granted European patent which does not include the designation of one of the participating Member States. No justification can be found to allow for Art. 3(1) of Regulation 1257/2012 to be applied contra legem. Request to refer questions to the CJEU denied (acte  clair) (Article 20 UPCA). The outcome in the present proceedings is based on a literal reading of Article 3(1) of Regulation 1257/2012

IPPT20250916, UPC CoA, Bodycap v EPO
No interlocutory revision of decision of the EPO to reject a request for unitary effect. An expedited action against a decision of the Office under Rule 97(1) RoP, falls under the exception set out in Rule 85(2) RoP. Compliance with the time limit under Rule 7(3) UPR is mandatory and excluded from re-establishment of rights. A proprietor of a European patent who has not complied with this period cannot have their rights reinstated, regardless of the reasons for failing to observe the said time limit.

Court of First Instance

IPPT20251230, UPC CFI, CD Paris, PAPST v EPO
In its decision of 10 November 2025, the EPO rejected the request of registration of unitary effect of the patent in suit, based on the fact that the patent had not been granted for all member states of the UPC that were participating at the time the request was filed. (Malta) Request for annulment of the decision of the EPO rejected.  (Rule 97 RoP). The UPC applies EU law in its entirety and respects its primacy in accordance with Art. 1(2) and Art. 20 of the UPCA, including reviewing a decision by the EPO. Compliance with the guarantees afforded by the EU legal order in administrative proceedings is all the more important for the EPO as the competent authority, so that the question of whether the EPO is bound by EU law can be left open. Unitary effect is not tied to the designation of the states in the patent application, but rather to the grant of the European patent as the final result, as well as to the date of the request for unitary effect. (Article 142 EPC , Article 149 EPC) . This is a deliberate legislative choice to ensure the unitary character of the European patent with unitary effect and cannot be regarded as an unintended gap. Regulation No. 1257/2012 on Unitary Patent protection does not provide that the designation of one or more Member States shall be deemed to be the designation of all Member States. The unitary character of the European patent with unitary effect requires that the grant of the patent give rise to the same substantive rights in all Member States. Thus, if the patent has not been granted for a Member State, these substantive rights cannot arise in that State, and the patent does not have a unitary character. 
 

IPPT20250806, UPC CFI, CD Milan, Bodycap v EPO
No annulment of decision of the EPO to reject a request for unitary effect because of an incorrect name and postal address submitted by a third party on behalf of the proprietors (R. 97.4 RoP). The fact that the third party was not aware of the change in address or the irregularity does not excuse the irregularity. The one month time limit stipulated by Rule 7.3 RPU already shows enough flexibility for the legal system. Allowing any extensions to this time frame would contradict legal certainty.