In late June the EU extended their package of sanctions in view of Russia’s actions in Ukraine by way of Council Regulation (EU) 2024/1745 of 24 June 2024.
Article 5s of those sanctions contain measures applicable to European Union (EU) intellectual property offices (IPOs), such as the EUIPO and national IPOs of member states of the EU. The sanctions state that these IPOs shall not accept
(a) new applications for registration of trademarks, patents, industrial designs, utility models, protected designations of origin, and geographical indications 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;
(b) any requests or submission filed by Russian nationals or natural persons residing in Russia, or by legal persons, entities or bodies established in Russia during the registration procedures before such intellectual property offices related to any of the intellectual property rights referred to in point (a).
The EPO have published a Notice stating, inter alia, that:
- the effect of the new EU sanctions, including any necessary follow-up measures, is currently under discussion with the representatives of the EPC contracting states
- 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.
As such, requests for registration of a Unitary Patent filed by a Russian national, natural person or legal person, entity or body established in Russia are to be stayed at present. It appears likely that such requests filed on or after 24 June may ultimately be refused or deemed not filed. It is possible this will lead to loss of rights for the patent proprietor(s) if a Unitary Patent cannot be obtained and where ‘national validation’ of the European patent is either not possible in EU Member States or has not been completed in due time in non-EU countries which have not adopted similar measures.
The new EU sanctions also require EU Member States to use their ‘best efforts’ to ensure that the European Patent Office does not accept new applications for registration of European patent applications that are filed by Russian nationals or natural persons residing in Russia, or by legal persons, entities or bodies established in Russia. A similar ‘best efforts’ clause is aimed at ensuring WIPO do not accept new applications for intellectual property rights by any Russian nationals or natural persons residing in Russia, or by legal persons, entities or bodies established in Russia.
Clearly the EU wish to influence the EPO and WIPO to adopt the EU position and not accept new applications for intellectual property rights from Russian nationals, natural persons or legal persons, entities or bodies established in Russia. It is unclear at this time if the EPO and WIPO will adopt this approach.
There is an exception in the new EU sanctions in that they shall not apply to nationals of a Member State, of a country member of the European Economic Area or of Switzerland, or to natural persons having a temporary or permanent residence permit in a Member State, in a country member of the European Economic Area or in Switzerland.
