UPC confirms that the “Malta Problem” bars a Unitary Patent

PAPST LICENSING GmbH & Co v EPO

UPC-CFI-0001771/2025 Decision of 30 December 2025 ⁽¹⁾

It was foreseen that the requirements of the Unitary Patent Regulation (1257/2012) might result that old European patent applications (effective filing date before 1 March 2007) could be ineligible for unitary patent protection. The UPC has now confirmed the view of the EPO that this is indeed the case.

Article 3(1) of Regulation 1257/2012 requires that to be eligible for unitary effect, a European patent must be granted “with the same set of claims in respect of all the participating Member States”. But Malta only joined the European Patent Convention on 1 March 2007, so a European patent application filed before that date (or any divisional derived from it) cannot designate Malta and so cannot have the same claims for Malta as for the other countries – it cannot have any claims for Malta at all.

This is precisely what happened in the case of EP3327608, ultimately derived from EP1714229, which was filed on 31 July 2005. EP3327608 was granted on 16 April 2025, and the proprietor requested unitary effect on 10 April 2025. The EPO rejected the application for non-compliance with Rule 5 of the Rules Relating to Unitary Patent Protection which, echoing Article 3(1) of Regulation 1257/2012, requires that “the European patent has been granted with the same set of claims in respect of all the participating Member States”. This accords with the EPO’s view of the provisions, already set out in detail in the Unitary Patent Guidelines Section 2.1. ⁽²⁾

The proprietor duly appealed. Appeal against refusal of unitary effect by the EPO lies with the UPC (not the EPO Boards of Appeal). In this case, the UPC agreed with the EPO, and upheld the refusal of unitary effect.

This situation will arise only rarely, and now likely only for multi generational divisional applications. With passage of time, there will no longer be European patents granted that did not designate Malta because it was unavailable, and so this issue will fade away. In the meantime, it should be checked that a European patent does indeed designate (and have the same claims for) all of the EU member states that participated in the enhanced cooperation that led to Regulation 1257/2012 (namely, all EU member states except Spain and Croatia). If not, then only national validation of such a patent is available.

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1. https://www.unifiedpatentcourt.org/en/node/160094
2. https://www.epo.org/en/legal/guidelines-up/2025/section_2_1.html